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Kevin M. Hayes, OSB #012801 Email: kevin.hayes@klarquist.com Jeffrey S. Love, OSB #873987 Email: jeffrey.love@klarquist.com KLARQUIST SPARKMAN, LLP 121 S.W. Salmon Street, Suite 1600 Portland, Oregon 97204 Telephone: 503-595-5300 Facsimile: 503-595-5301 Margaret E. Schroeder, OSB #025748 Email: mes@bhlaw.com BLACK HELTERLINE LLP 805 S.W. Broadway, Suite 1900 Portland, OR 97205 Telephone: 503-224-5560 Facsimile: 503-224-6148 Attorneys for Plaintiff KASSAB JEWELERS, INC.

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF OREGON PORTLAND DIVISION

KASSAB JEWELERS, INC., Plaintiff, v. JOSEPH KASSAB and J. KASSAB JEWELERS & CUSTOM DESIGN, INC., an Oregon Corporation, d/b/a JOE KASSAB JEWELERS, Defendants.

Civil No. _________ COMPLAINT FOR TRADEMARK INFRINGEMENT, UNFAIR COMPETITION, DILUTION, AND BREACH OF CONTRACT

COMPLAINT FOR TRADEMARK INFRINGEMENT, UNFAIR COMPETITION, DILUTION, AND BREACH OF CONTRACT

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Plaintiff Kassab Jewelers, Inc. (Kassab Jewelers), through its attorneys, complains of Defendants Joseph Kassab and J. Kassab Jewelers & Custom Design, Inc., one or both of whom is doing business as Joe Kassab Jewelers, and alleges as follows, upon knowledge with respect to itself and its own acts, and upon information and belief as to all other matters: I. THE KASSAB JEWELERS MARKS AND THE NATURE OF THE ACTION 1. This is an action at law and in equity to remedy acts of trademark infringement

and unfair competition under federal and Oregon law, all caused by Defendants unauthorized use in commerce of Plaintiff Kassab Jewelers KASSAB JEWELERS and KASSAB trade names, trademarks and service marks (hereinafter, the Asserted Kassab Jewelers Marks). In addition, this action seeks to remedy Defendant Joseph Kassabs breach of his contract not to use the Asserted Kassab Jewelers Marks other than as permitted under such contract. 2. Kassab Jewelers is the owner of a federally registered, incontestable service mark

for the mark KASSAB JEWELERS for retail jewelry store services and wholesale jewelry store services, registered on the Principal Register of the United States Patent and Trademark Office as United States Trademark Registration No. 1,960,490. A true copy of this registration is attached hereto as Exh. A. The mark was registered on March 5, 1996. 3. Kassab Jewelers is also the owner of Oregon state trademark registrations for the

trademark KASSAB (Registration No. T/S 38370) for jewelry, jewelry design services, retail and wholesale jewelry store and jewelry sales services and KASSAB JEWELERS (Registration No. T/S 38369) for jewelry, jewelry design services, retail and wholesale jewelry store and jewelry sales services. True copies of the registrations for these marks are attached hereto as Exhs. B and C. These marks were both registered in Oregon on March 22, 2005.

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4.

Kassab Jewelers further owns the common law trade names, trademarks and

service marks KASSAB JEWELERS and KASSAB, based on its extensive use of those marks in the Portland area and elsewhere for its jewelry services and products since at least 1990. 5. Pursuant to 15 U.S.C. 1065, Kassab Jewelers federal registration for the mark

KASSAB JEWELERS became incontestable in April 2001 upon its filing of the appropriate documents with the Patent and Trademark Office. 6. Defendants recently opened a store at the Bridgeport Village shopping mall in

Tigard, Oregon, under the name JOE KASSAB JEWELERS (as can be seen in the screen capture from the malls website copied below):

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7.

The parties have an agreement dated January 27, 2005 (the 2005 Agreement)

(attached as Exh. D) that restricts Defendants use of JOE KASSAB JEWELERS to only the two locations in Portland at which Defendant had stores in 2005: a store at Clackamas Town Center and a store at the Lloyd Center shopping mall. The Lloyd Center store location has since closed 8. The 2005 Agreement prohibits Defendants use of JOE KASSAB JEWELERS for

a store at any other location other than those two licensed locations. 9. The 2005 Agreement further states that outside of the two licensed locations in

Portland, Defendant Joseph Kassab, and any company of which he is now an officer or majority owner, which includes Defendant J. Kassab Jewelers & Custom Design, Inc., would not use KASSAB, alone or in combination with any one or more other letters, words, marks, or designs, in connection with a jewelry business as a business name, trademark, and/or service mark. 10. Defendants complied with the 2005 Agreement by not using the word KASSAB

when they opened a jewelry store at the corner of SW Broadway and Alder St. in Portland under the name Joseph K. Wedding Rings next door to Plaintiffs Portland store. 11. The Bridgeport Village shopping mall in Tigard, Oregon is not one of the two

locations where Defendants use of JOE KASSAB JEWELERS is allowed under the 2005 Agreement. 12. Defendants use of JOE KASSAB JEWELERS for the Bridgeport Village

shopping mall jewelry store breaches Defendants agreement not to use a name or mark comprising KASSAB as set forth in the 2005 Agreement and also constitutes infringement of Plaintiffs trademark rights in the Asserted Kassab Jewelers Marks. 13. Defendant Joseph Kassabs license agreement with Plaintiff precludes Defendants

from challenging the validity of the Asserted Kassab Jewelers Marks. COMPLAINT FOR TRADEMARK INFRINGEMENT, UNFAIR COMPETITION, DILUTION, AND BREACH OF CONTRACT Page 3

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II.

THE PARTIES 14. Plaintiff Kassab Jewelers is a corporation organized and existing under the laws

of the state of Oregon with its principal place of business at 529 SW Broadway, Portland, Oregon, 97205-3425. Kassab Jewelers is located and does business within this judicial district. 15. Defendant J. Kassab Jewelers & Custom Design, Inc. is an Oregon corporation

with its principal place of business at 12000 SE 82nd Ave. #2068, Happy Valley, Oregon. Defendant J. Kassab Jewelers & Custom Design, Inc. is doing business in this judicial district. 16. Defendant Joseph Kassab is an individual and the President of Defendant J.

Kassab Jewelers & Custom Design, Inc. Defendant Joseph Kassab is doing business in this judicial district. 17. One or both Defendants are believed to be doing business as Joe Kassab Jewelers

at the Clackamas Town Center and now at the Bridgeport Village shopping mall in Tigard, Oregon. III. JURISDICTION AND VENUE 18. This Court has jurisdiction over the subject matter of this action because this action

arises under the Federal Trademark Act, 15 U.S.C. 1051-1127, jurisdiction being conferred in accordance with 15 U.S.C. 1121 and 28 U.S.C. 1331 and 1338. Supplemental jurisdiction over the causes of action under Oregon state law is proper as those causes of action are substantially related to the causes of action over which the Court has original jurisdiction, pursuant to 28 U.S.C. 1338(b) and 1367. Venue is proper under 28 U.S.C. 1391(b) in that Defendants are doing and transacting business within, and have committed the acts complained of herein, in this judicial district.

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IV.

THE FACTS A. 19. Kassab Jewelers Products and Services Kassab Jewelers is a Portland, Oregon-based provider of retail and wholesale

jewelry store services and premium jewelry and jewelry designs marketed and sold under the Asserted Kassab Jewelers Marks. Since at least as early as 1990, Kassab Jewelers and its predecessors in interest have provided quality jewelry store services in Portland and the surrounding areas. Kassab Jewelers uses the Asserted Kassab Jewelers Marks at its retail store located at 529 SW Broadway, Portland, Oregon, photographs of which are attached hereto as Exh. E; at its two other retail stores located at 310 State Street #106 in Lake Oswego, Oregon, and in the Washington Square Mall located at 9306 S.W. Washington Square Road in Tigard, Oregon; on its website at www.kassabjewelers.com (a recent screen captures from select pages from this website are attached hereto as Exh. F); and otherwise in commerce in connection with the sale and marketing of jewelry, including on sales tags, product packaging, labels, signs, letterhead, business cards and advertisements. 20. Kassab Jewelers enjoys a strong reputation in the trade locally and regionally for its

signature services offered under the Asserted Kassab Jewelers Marks and has enjoyed this reputation for a long time. An example of its reputation is shown in the February 2005 Portland Tribune article on Valentines Day gifts, attached hereto as Exh. G, picturing the Asserted Kassab Jewelers Marks in connection with the Kassab Jewelers store as a recommended destination for jewelry purchases. This strong reputation has caused the Asserted Kassab Jewelers Marks to come to signify Kassab Jewelers products and services in the minds of consumers, in whom the Asserted Kassab Jewelers Marks evoke favorable images of Kassab Jewelers and its products and services. In at least the Portland metropolitan area, the Asserted COMPLAINT FOR TRADEMARK INFRINGEMENT, UNFAIR COMPETITION, DILUTION, AND BREACH OF CONTRACT Page 5

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Kassab Jewelers Marks are widely recognized as a designation of the source of the Plaintiffs services. 21. Since at least as early as March 1990, Kassab Jewelers has continuously provided

its products and services in commerce under the Asserted Kassab Jewelers Marks in Portland and the surrounding area. Kassab Jewelers has spent significant sums in the advertising and promotion of its products and services offered under the Asserted Kassab Jewelers Marks. B. 22. Defendants Infringing Acts Defendants recently commenced prominent use, in commerce, of Kassab

Jewelers and Kassab in the name and mark Joe Kassab Jewelers to identify the source of a jewelry business at the Bridgeport Village shopping mall in Oregon, just south of Portland. 23. By explicitly using Kassab and Kassab Jewelers in the name and mark for

their jewelry business Joe Kassab Jewelers, Defendants are infringing upon the Asserted Kassab Jewelers Marks. 24. By using the name and mark Joe Kassab Jewelers outside of the two licensed

locations in Portland, Oregon, Defendant Joseph Kassab has breached his agreement not to use KASSAB, alone or in combination with any one or more other letters, words, marks, or designs, in connection with a jewelry business as a business name, trademark, and/or service mark. 25. Consumers of jewelry store services have been actually confused by Defendants

use of the name and mark Joe Kassab Jewelers at the Bridgeport Village shopping mall, mistakenly associating Defendants store there with Plaintiff. 26. Defendants actions are knowing, willful, and without Plaintiffs authorization, and

Defendants are directly, contributorily, and vicariously liable for the resulting acts of unfair competition, trademark infringement, and breach of contract. COMPLAINT FOR TRADEMARK INFRINGEMENT, UNFAIR COMPETITION, DILUTION, AND BREACH OF CONTRACT Page 6

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V.

CAUSES OF ACTION A. 27. Unfair Competition Kassab Jewelers repeats and re-alleges each and every allegation contained in the

above paragraphs of this Complaint as though fully set forth herein. 28. This cause of action for unfair competition arises under Section 43(a)(1) of the

Lanham Act, 15 U.S.C. 1125 (a)(1), and Oregon state common law. 29. Defendants use of the Asserted Kassab Jewelers Marks in commerce as alleged

hereinabove is likely to cause confusion, mistake, or deception as to the affiliation, connection, or association of Defendants with Plaintiff Kassab Jewelers or as to the origin, sponsorship, or approval of the products and services of Defendants and those of Plaintiff Kassab Jewelers, and misrepresents the nature, characteristics, and qualities of these products and services. 30. The acts of Defendants constitute unfair competition in violation of Section

43(a)(1) of the Lanham Act, 15 U.S.C. 1125(a)(1), and unfair competition under Oregon common law. 31. Kassab Jewelers is without an adequate remedy at law because Defendants unfair

competition has caused irreparable injury to Kassab Jewelers, and unless said acts are enjoined by this Court, they will continue and Kassab Jewelers will continue to suffer irreparable injury. 32. Defendants acts of unfair competition, if not enjoined, will cause Kassab Jewelers

to sustain monetary damages, loss, and injury. B. 33. Trademark Infringement Kassab Jewelers repeats and realleges each and every allegation contained in the

above paragraphs of this Complaint as though fully set forth herein.

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34.

The acts of Defendants constitute trademark infringement in violation of 15 U.S.C.

1114(1)(a), ORS 647.095, and Oregon common law. 35. Defendants use of the Asserted Kassab Jewelers Marks as alleged hereinabove is

likely to cause confusion, mistake, or deception as to the source, sponsorship, or approval of the products and services of Defendants in that others are likely to believe that Defendants goods and services are in some way legitimately connected with, sponsored or licensed by, or otherwise related to Kassab Jewelers. 36. Defendants use of the Asserted Kassab Jewelers Marks was made with actual or

constructive knowledge of Kassab Jewelers rights in the Asserted Kassab Jewelers Marks. 37. Defendants use of the Asserted Kassab Jewelers Marks in Tigard, Oregon, is

without Kassab Jewelers consent or permission. 38. Defendants acts of trademark infringement, unless enjoined, will cause Kassab

Jewelers to sustain monetary damages, loss, and injury. C. 39. Dilution Kassab Jewelers repeats and realleges each and every allegation contained in the

above paragraphs of this Complaint as though fully set forth herein. 40. 41. The acts of Defendants constitute dilution in violation of ORS 647.107. Defendants use of the Asserted Kassab Jewelers Marks as alleged hereinabove

causes and are likely to cause consumers to associate the Asserted Kassab Jewelers Marks with Defendants and its products and services, and thereby reduces their effectiveness in identifying and advertising Kassab Jewelers products and services. 42. Defendants use of the Asserted Kassab Jewelers Marks was made with actual or

constructive knowledge of Kassab Jewelers rights in the Asserted Kassab Jewelers Marks. COMPLAINT FOR TRADEMARK INFRINGEMENT, UNFAIR COMPETITION, DILUTION, AND BREACH OF CONTRACT Page 8

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43.

Defendants use of the Asserted Kassab Jewelers Marks is without Kassab

Jewelers consent or permission. 44. Kassab Jewelers is without an adequate remedy at law because Defendants

dilution of the Asserted Kassab Jewelers Marks has caused irreparable injury to Kassab Jewelers, and unless said acts are enjoined by this Court, they will continue and Kassab Jewelers will continue to suffer irreparable injury. D. 45. Breach of Contract Kassab Jewelers repeats and realleges each and every allegation contained in the

above paragraphs of this Complaint as though fully set forth herein 46. By using the name and mark Joe Kassab Jewelers outside of the two licensed

locations in Portland, Oregon, Defendants have breached their agreement set forth in the 2005 Agreement not to use KASSAB, alone or in combination with any one or more other letters, words, marks, or designs, in connection with a jewelry business as a business name, trademark, and/or service mark. 47. Kassab Jewelers is without an adequate remedy at law because Defendants

breach of the agreement has caused irreparable injury to Kassab Jewelers, and unless said acts are enjoined by this Court and the Court orders specific performance of the contract, the acts will continue and Kassab Jewelers will continue to suffer irreparable injury.

PRAYER FOR RELIEF WHEREFORE, Plaintiff Kassab Jewelers prays that, pursuant to 15 U.S.C. 1116 to 1125 and Oregon state law:

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A.

The Court finds that Kassab Jewelers owns valid and subsisting trademark rights

in the Asserted Kassab Jewelers Marks. B. C. Defendants be held liable under each claim for relief set forth in this Complaint. The Court grant an injunction that Defendants, their affiliated companies, and

its/their agents, servants, employees, and attorneys, and all other persons in active concert or participation with them, be enjoined from using KASSAB and/or KASSAB JEWELERS (however spelled or punctuated, whether capitalized, abbreviated, singular or plural, printed or stylized, whether alone or in combination with any word(s), punctuation or symbol(s), and whether used in caption, text, orally or otherwise), or any other reproduction, counterfeit, copy, colorable imitation or confusingly similar variation of KASSAB or KASSAB JEWELERS, as a trademark or service mark, trade name or domain name, or in advertising, distribution, sale, or offering for sale of products and/or services. D. The Court order as part of the injunction that Defendants file with the Court and

serve on Plaintiff within thirty days after the service on the Defendants of the injunction, a report in writing under oath setting forth in detail the manner and form in which the Defendants have complied with the injunction. E. Defendants be required to pay to Kassab Jewelers its reasonable attorneys fees

and disbursements incurred herein, pursuant to 15 U.S.C. 1117 and the equity powers of this Court. F. Defendants be required to pay Kassab Jewelers the costs of this action.

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G.

The Court award Kassab Jewelers such other and further relief as this Court

deems just and equitable. Respectfully submitted,

Dated: January 15, 2013

By:

_s/ Kevin M. Hayes______________ Kevin M. Hayes, OSB #012801 Email: kevin.hayes@klarquist.com Jeffrey S. Love, OSB #873987 Email: jeffrey.love@klarquist.com KLARQUIST SPARKMAN, LLP 121 S.W. Salmon Street, Suite 1600 Portland, Oregon 97204 Telephone: 503-595-5300 Facsimile: 503-595-5301 Margaret E. Schroeder, OSB #025748 Email: mes@bhlaw.com BLACK HELTERLINE LLP 805 S.W. Broadway, Suite 1900 Portland, OR 97205 Telephone: 503-224-5560 Facsimile: 503-224-6148 Attorneys for Plaintiff KASSAB JEWELERS, INC.

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