Case 3:11-cv-00309-BR Document 1 Filed 03/11/11 Page 1 of 7 Page ID#: 1

Scott D. Eads, OSB No. 910400 FlLEIfll tIPR 1116-190SBC-QRP

SEads@perkinscoie.com
PERKINS COIE llp
1120 N.W. Couch Street, Tenth Floor
Portland, OR 97209-4128
Telephone: 503.727.2000
Facsimile: 503.727.2222

Attorneys for Plaintiff

Icebreaker Limited

UNITED STATES DISTRICT COURT

DISTRICT OF OREGON

PORTLAND DIVISION

ICEBREAKER LIMITED, a New

Zealand corporation,
^VH- 30 9 BR
Plaintiff, COMPLAINT FOR DECLARATORY
JUDGMENT OF NO TRADEMARK
v. INFRINGEMENT

GILMAR S.P.A., an Italian corporation,

Defendant.

Plaintiff, Icebreaker Limited ("Plaintiff'), for its Complaint against defendant Gilmar
S.P.A. ("Defendant"), states and alleges as follows:
NATURE OF THE ACTION

1. This is an action for declaratory judgment pursuant to 28 U.S.C. §§ 2201 and

2202. This action arises under the trademark laws of the United States, including 15 U.S.C. §§

1114 and 1125.

2. Plaintiffoffers a variety of merino wool-based apparel products ("Plaintiffs

Apparel Goods") and operates retail stores selling such products ("Plaintiffs Retail Services").

1- COMPLAINT FOR DECLARATORY JUDGMENT Perkins Coie llp

1120 N. W. Couch Street, Tenth Floor
Portland, OR 97209-4128
 Case 3:11-cv-00309-BR Document 1 Filed 03/11/11 Page 2 of 7 Page ID#: 2

Plaintiff seeks a declaratory judgment that it has not infringed and will not infringe any
trademark purportedly owned by Defendant, a seller offashion apparel. There isa need for such
reliefbecause Defendant has asserted that Plaintiffis infringing and will infringe its rights in
several trademarks containing the term ICE, and because Defendant has formally opposed
registration ofPlaintiffs ICEBREAKER trademark, for apparel goods and retail store services,
with the United States Patent & Trademark Office ("USPTO").

PARTIES

3. Plaintiff Icebreaker Limitedis a New Zealand corporationwith its United States

headquarters at 1330 NW 14thStreet, Portland, Oregon.

4. On information and belief, DefendantGilmar S.P.A., is an Italian corporation
with its principal place ofbusiness atVia Malpasso 723-725 S.Giovanni, Italy.
JURISDICTION AND VENUE

5. The Court has subject matter jurisdiction over the claims pursuant to 28 U.S.C. §§
2201 et seq., 28 U.S.C. §§ 1331 (federal question), 1338(a) (trademark action), and 28 U.S.C.
§ 1332. Venue is proper under 28 U.S.C. § 1391(b) because, on information and belief, plaintiff
resides in thisdistrict, defendant has no business residence in the United States, defendant sells
its products throughout the United States including in this judicial district, and a substantial part
of the events giving rise to the claim occurred here.
BACKGROUND FACTS

6. Plaintiff offers a variety of merino wool-based apparel products, andoperates

retail stores featuring such products, under theICEBREAKER trademark and trade name.
7. Plaintiffhas offered Plaintiffs Apparel Goods under the ICEBREAKER
trademark and trade name in the United States since at least as early as 2004, and has offered
Plaintiffs Retail Services under the ICEBREAKER trademark and trade name in the United

States since at least as early as 2007.

2- COMPLAINT FOR DECLARATORY JUDGMENT Perkins Coie llp

1120 N.W. Couch Street, Tenth Floor
Portland, OR 97209-4128
Phone: 503.727.2000
91004-0005/LEGAL20400899.1
Fax: 503.727.2222
 Case 3:11-cv-00309-BR Document 1 Filed 03/11/11 Page 3 of 7 Page ID#: 3

8. Plaintiffowns incontestable federal registration no. 1362030 for the mark

ICEBREAKER & Design, covering insulated footwear, with rights dating back to 1984. See
Exhibit A attached hereto. That mark is currently used by Plaintiffs licensee.
9. Plaintiffis the owner of pending applications Serial No. 78683696,76528102,
78683671, 77212963 and 77212966 (collectively, Plaintiffs ICEBREAKER Applications"). See
Exhibit B attached hereto.

10. Defendant is, on information andbelief, a seller of fashion apparel products, and
claims use and ownership of numerous trademarks containing the term ICE with such products.
11. Defendant has asserted that Plaintiffs use of the trademark and trade name

ICEBREAKER infringes trademark rights owned by Defendant. Attached hereto as Exhibit C is

a letter dated September 1,2005 from Defendant asserting such infringement.
12. Beginning in2005 and continuing through 2009, Defendant has filed with the
USPTO's Trademark Trial andAppeal Board (the "TTAB") oppositions No. 91167875,
91190574,91190567,91192163 and 91192164 (collectively, the "Oppositions") to oppose
Plaintiffs ICEBREAKER Applications, onpriority and likelihood ofconfusion grounds.
13. Plaintiffhas filed petition No. 92053414 (the "Cancellation") to cancel the
following registrations (collectively, the "Cancellation Registrations") for ICE marks owned by
Defendant on non-use abandonment grounds:

Reg. No. Mark Ree. No. Mark Res. No. Mark

1850734 ICE 1477299 ICEBERG 1477298 ICEBERG
JEANS SPORT ICE
3029399 ICEB 2909353 SPORT ICE 2518973 HISTORY
ICEBERG
3303328 ICE ICE 3029400 ICEB
BABY ICEBERG
ICEBERG

3- COMPLAINT FOR DECLARATORY JUDGMENT Perkins Coie llp

1120 N.W. Couch Street, Tenth Floor
Portland, OR 97209-4128
Phone: 503.727.2000
91004-0005/LEGAL20400899.1
Fax: 503.727.2222
 Case 3:11-cv-00309-BR Document 1 Filed 03/11/11 Page 4 of 7 Page ID#: 4

14. The Oppositions and the Cancellation have been consolidated by the TTAB (with
Opposition No. 91167875 asthe parent case), and are currently in the discovery period. A copy
of the Board's March 1,2011 scheduling order is attached as Exhibit D hereto.
15. Defendant has asserted that Plaintiff's use of its ICEBREAKER trademark and

trade name infringes Defendant's purported rights in at least the following trademark

Ree. No. Mark Ree. No. Mark Ree. No. Mark

1850734 ICE 1477299 ICEBERG 1477298 ICEBERG
JEANS SPORT ICE
3029399 ICEB 2909353 SPORT ICE 2518973 HISTORY
ICEBERG
3303328 ICE ICE 3029400 ICEB 1269297 ICEBERG
BABY ICEBERG
ICEBERG

16. OnJanuary 18,2011, in a meeting between counsel forthe parties, counsel for
Defendant stated unequivocally that Plaintiff must change its ICEBREAKER mark and trade
name.

17. Defendant's recent demand that Plaintiff stop using its valuable ICEBREAKER
trademark andtrade name as created an objective threat that Defendant intends to take additional
and further legal action against Plaintiff unless Plaintiff accedes to Defendant's demand.
CLAIMS FOR DECLARATORY RELIEF

COUNT 1

(No Trademark Infringement)

18. The allegations of paragraphs 1-17 above are hereby incorporated by reference as
if fully set forth herein.
19. There is a justiciable dispute between the parties as to whether Plaintiffs useof
the ICEBREAKERtrademark and trade name with Plaintiffs Apparel Goods and Plaintiffs

4- COMPLAINT FOR DECLARATORY JUDGMENT Perkins Coie llp

1120 N.W. Couch Street, Tenth Floor
Portland, OR 97209-4128
Phone: 503.727.2000
91004-0005/LEGAL20400899.1
Fax: 503.727.2222
 Case 3:11-cv-00309-BR Document 1 Filed 03/11/11 Page 5 of 7 Page ID#: 5

Retail Services will infringe any rights owned by Defendant in Defendant's ICE Marks, or
constitute unfair competition under federal or state lawwith respect to such marks.
20. There are numerous third partytrademarks containing the term ICE usedand
federally registered with apparel products in the United States.
21. No entity has a right to monopolize theterm "ICE" in connection with apparel
products.
22. There has been no confusioncreated by Plaintiffs use of the ICEBREAKER
trademark and trade name in connection with Plaintiffs Apparel Goods and Plaintiffs Retail
Services and any of Defendant's ICE marks, despite several years of overlap in the marketplace.
23. There is no likelihood of confusion between Plaintiffs trademark and trade name

ICEBREAKER, as used with Plaintiffs Apparel Goods and Plaintiffs Retail Services, and any of
Defendant's ICE Marks, as used with Defendant's apparel products.
24. Plaintiffhas not violated Defendant's rights in any of Defendant's ICE Marks, or
committed unfair competition with respect to any such marks, by itsuse of the ICEBREAKER
trademark and trade name with Plaintiffs Apparel Goods and Plaintiffs Retail Services.
25. Plaintiffwill not violate Defendant's rights in any of Defendant's ICE Marks, or
commit unfair competition with respect to any such marks, by its use of the ICEBREAKER
trademark and trade name withPlaintiffs Apparel Goods and Plaintiffs Retail Services.
26. Plaintiffis entitled to declaratory judgment that it has not infringed any of
Defendant's ICEMarks, or committed unfair competition with respect to any such marks, by
reason of its use of the trademark and trade name ICEBREAKER with Plaintiffs Apparel Goods

and Plaintiffs Retail Services.

5- COMPLAINT FOR DECLARATORY JUDGMENT Perkins Coie llp

1120 N.W. Couch Street, Tenth Floor
Portland, OR 97209-4128
Phone: 503.727.2000
91004-0005/LEGAL20400899.1
Fax: 503.727.2222
 Case 3:11-cv-00309-BR Document 1 Filed 03/11/11 Page 6 of 7 Page ID#: 6

COUNT2

(Abandonment)

27. The allegations ofparagraphs 1-26 above are hereby incorporated by reference as
if fully set forth herein.
28. On information and belief, Defendant has ceased use of each of the marks in the
Cancellation Registrations.
29. On information and belief, Defendanthas an intent not to resume use of each of
the marks in the Cancellation Registrations.
30. On information and belief, Defendant has ceased use of each of the marks in the
Cancellation Registrations for atleast three consecutive years following the corresponding
registration date for each such mark.
31. The marks in the Cancellation Registrations havebeen abandoned, and those
registrations should be canceled.
PRAYER FOR RELIEF

WHEREFORE, Plaintiffprays for the following relief:

A. A declaratory judgment that:
1. No likelihood of confusion has been, or will be, created with any of Defendant's

ICE Marks byPlaintiffs use of ICEBREAKER as a trademark or trade name in

connection with Plaintiffs Apparel Goods and Plaintiffs Retail Services;
2. Plaintiff has not committed, and will not commit, unfair competitionwith respect
to any of Defendant's ICE Marks by reason of Plaintiffs use of ICEBREAKER as
a trademark or trade name in connection with Plaintiffs Apparel Goods and
Plaintiffs Retail Services; and

3. The marks listed in the Cancellation Registrations have been abandoned, and the
Cancellation Registrations should be canceled.

6- COMPLAINT FOR DECLARATORY JUDGMENT Perkins Coie llp

1120 N.W. Couch Street, Tenth Floor
Portland, OR 97209-4128
Phone: 503.727.2000
91004-0005/LEGAL20400899.1
Fax: 503.727.2222
 Case 3:11-cv-00309-BR Document 1 Filed 03/11/11 Page 7 of 7 Page ID#: 7

B. A preliminary and permanent injunction prohibiting Defendant, itsaffiliates,

agents, servants, employees and attorneys, and any and all other persons inactive concert or
participation with them, from improperly interfering with Plaintiffs business, including from
asserting that Plaintiffs use or registration ofthe term "ICEBREAKER" with Plaintiffs Apparel
Goodsand Plaintiffs Retail Services violates Defendant's rights in any of Defendant's ICE
Marks or constitutes unfair competition withrespect to any suchmarks;
C. Foran award of attorneys' fees and costs to Plaintiff to the extent permitted by
law; and

D. For such further and other relief as the Court deems just and proper.

DATED: March 11,2011 s/ Scott P. Eads, OSB No. 910400

SEads@perkinscoie.com
Perkins Coie llp
1120 N.W. Couch Street, Tenth Floor
Portland, OR 97209-4128
Telephone: 503.727.2000
Facsimile: 503.727.2222

Attorneys for Plaintiff

Icebreaker Limited

7- COMPLAINT FOR DECLARATORY JUDGMENT Perkins Coie llp

1120 N.W. Couch Street, Tenth Floor
Portland, OR 97209-4128
Phone: 503.727.2000
91004-0005/LEGAL20400899.1
Fax: 503.727.2222