Professional Documents
Culture Documents
Document 1
Filed 12/23/14
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Case No.
COMPLAINT FOR TRADEMARK
INFRINGEMENT
DEMAND FOR JURY TRIAL
TRADEMARK CASE
For its Complaint against Kool Trans LLC (Kool Trans), Kool Pak LLC (Kool Pak)
alleges as follows:
PARTIES
1.
Kool Pak is an Oregon limited liability company with a primary place of business
Upon information and belief, Kool Trans LLC is an Arizona limited liability
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This court has subject matter jurisdiction over Kool Paks federal trademark
claims pursuant to 28 U.S.C. 1331 and 1338. This Court has jurisdiction over Kool Paks
related common law claims pursuant to 28 U.S.C. 1367.
4.
This court has personal jurisdiction over defendant Kool Trans because, upon
information and belief, defendant has used the KOOLTRANS name/mark in connection with the
provision of services within this state, or has engaged in acts or omissions within this state
causing injury to Kool Pak, or has engaged in acts or omissions outside of this state causing
injury within this state, or has otherwise established contacts within this state sufficient to permit
the exercise of personal jurisdiction. Venue is proper in this district pursuant to 28 U.S.C.
1391(b) and (c).
FACTS
5.
Kool Pak owns a family of KOOL trademarks for refrigerated trucking services
and related products and services, including the following KOOL Marks:
KOOL PAK
KOOL PAK
KOOL
KEEP IT KOOL
KOOL SHIELD
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Most of Kool Paks KOOL Marks are registered with the U.S. Patent and Trademark Office, and
copies of the registration certifications are attached as Exhibits 1(a)-1(f).
7.
Kool Pak has used KOOL PAK as a service mark for refrigerated trucking
services for over 45 years. By virtue of extensive use of KOOL PAK over a long period of time,
and by virtue of its use and registration of the other KOOL Marks, Kool Pak has established
strong trademark rights in KOOL PAK and its other KOOL Marks.
8.
In use, Kool Pak presents its KOOL Marks to the public in dark blue bold block
letters. Attached as Exhibit 2 is a photograph of a Kool Pak truck with KOOL PAK in dark
blue bold block letters against a white background.
9.
Upon information and belief, Kool Trans began using KOOLTRANS as a service
Kool Trans presents its KOOLTRANS mark to the public in bold block lettering
with the KOOL portion of KOOLTRANS in dark blue, emphasizing the KOOL portion of the
mark and setting it apart from the TRANS portion of the mark.
11.
in bold block lettering against a white background and the KOOL portion in dark blue.
12.
Kool Trans KOOL in Exhibit 3 is substantially identical in font, color and size
Attached as Exhibit 4 is a frontal photograph of four Kool Trans trucks. The dark
blue KOOL is plainly visible against the white truck while the light blue TRANS is barely
discernable.
14.
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15.
KOOL is the dominant portion of KOOL PAK and the centerpiece of its family of
KOOL Marks. It is Kool Paks intent to migrate to its registered KOOL mark as the umbrella
mark for its family of KOOL Marks.
16.
Kool Pak and Kool Trans are head-to-head competitors for refrigerated trucking
On August 13, 2014, Kool Pak wrote to Jon Isaacson, President and a Manager of
Kool Trans, noting Kool Trans recent adoption of the service mark KOOLTRANS, informing
Mr. Isaacson of Kool Paks family of KOOL Marks and U.S. Trademark registrations therefor,
noting that the respective services provided under the respective marks are identical, expressing a
concern about likelihood of confusion, and suggesting that since Kool Trans had just begun
operation and had not yet built up significant name familiarity, it was a good time to reconsider
use of the newly adopted KOOLTRANS mark.
19.
On August 29, 2014, having had no response to its letter to Mr. Isaacson, Kool
Pak sent a copy of its August 13 letter to Todd F. Carlson, Registered Agent for Kool Trans, and
to Kevin Knight, a Manager of Kool Trans LLC.
20.
On September 16, 2014, Kool Paks lawyers received a letter from Jessica
Benford, attorney for Kool Trans, stating that Kool Trans does not believe that its name is
confusingly similar to KOOL PAK and requesting further information about Kool Paks
trademark registrations for KOOL Marks and Kool Paks claim of long use of KOOL PAK.
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21.
On September 19, 2014, Kool Pak responded to Ms. Benfords request for further
information by providing registration numbers for its KOOL family of marks and attaching proof
of Kool Paks long use of KOOL PAK.
22.
Kool Trans and Kevin Knight have failed to respond to Kool Paks September 19,
Instead Kool Trans filed trademark applications with the U.S. Patent and
Trademark Office to register KOOLTRANS and KOOLTRANS and Design as service marks for
interstate freight transportation by truck, alleging June 25, 2014 as the date of first use of the
marks.
24.
Upon information and belief, Kool Trans is substantially owned by its sole
Member, Knight Capital Growth LLC, which is in turn owned by Knight Transportation, Inc.
(Knight Transportation). Kevin Knight, Chairman and Chief Executive Officer of Knight
Transportation, and David Jackson, President of Knight Transportation, are the other two
Managers of Kool Trans.
25.
Upon information and belief, Kool Trans is substantially owned by and controlled
by Knight Transportation.
26.
and one of North Americas largest trucking companies. Knight Transportation operates a fleet
of 4000 trucks and is valued at approximately $606 million.
27.
Upon information and belief, Kool Trans intends to leverage the administrative
capabilities and facility network of Knight Transportation to rapidly build Kool Trans presence
in the refrigerated trucking business.
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28.
Upon information and belief, with financial backing from Knight Transportation,
Kool Trans is starting big with a fleet of 50 new 2015 Freightliner trucks and ThermoKing
refrigerated trailers. Kool Trans expects to grow rapidly with plans to have 150-200 trucks on
the road within 12 to 18 months.
29.
Upon information and belief, Kool Trans was aware of Kool Paks long use of
KOOL PAK prior to adoption and first use of KOOLTRANS, and Kool Trans adoption of and
use of KOOLTRANS has been deliberate, willful, malicious, and in reckless disregard of
Kool Paks rights.
30.
Since at least August 2014 Kool Trans has been aware of Kool Paks family of
KOOL Marks, Kool Paks ownership of multiple trademark registrations for KOOL Marks, Kool
Paks exclusive right to use its Registered KOOL Marks, and Kool Paks long use of KOOL
PAK. Kool Trans subsequent and continued use of KOOLTRANS has been deliberate, willful,
malicious, and in reckless disregard of Kool Paks rights.
31.
cause confusion with Koo Paks prior use of its KOOL Marks for the same services.
32.
Kool Pak has been and will continue to be damaged by Kool Trans use of
KOOLTRANS.
CLAIMS FOR RELIEF (1-6)
(Trademark Infringement of The Registered KOOL Marks)
33.
34.
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35.
Kool Pak is the sole owner of a family of KOOL Marks, including the following
registered marks (the Registered KOOL Marks) for refrigerated trucking services and related
products and services:
36.
KOOL PAK
KOOL
KEEP IT KOOL
KOOL SHIELD
The services provided by KOOL PAK under the Registered KOOL Marks are
identical to the services provided by Kool Trans under the infringing KOOLTRANS mark.
37.
Marks with KOOL being the dominant portion of both marks. In the case of Kool Paks KOOL
mark, substantially the entire mark is subsumed in Kool Trans infringing KOOLTRANS mark.
38.
cause confusion, or to cause mistake, or to deceive with respect to Kool Paks prior use of each
of the Registered KOOL Marks.
39.
Kool Trans use of the KOOLTRANS infringes each of the Registered KOOL
Marks. Kool Pak has been and will continue to be damaged by Kool Trans use of
KOOLTRANS unless Kool Trans is enjoined.
40.
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41.
Kool Trans actions have been willful, deliberate and malicious, with full
knowledge of Kool Paks rights and registrations, and therefore this case is exceptional under 15
U.S.C. 1117 entitling Kool Pak to an award of its reasonable attorney fees.
CLAIMS FOR RELIEF 7-13
(Federal Statutory False Designation of Origin)
42.
43.
44.
With respect to each of the KOOL Marks (see paragraph 6), Kool Trans use of
KOOLTRANS has caused and/or is likely to cause confusion, to cause mistake, or to deceive as
to the origin, sponsorship, or approval of Kool Trans services by Kool Pak. Such likely
confusion, mistake or deception as to the origin of Kool Trans services under 15 U.S.C.
1125(a) is independent of the rights afforded to Kool Paks Registered KOOL Marks under
15 U.S.C. 1114.
45.
Kool Trans actions have been deliberate, willful and malicious with full
knowledge of Kool Paks rights in the KOOL Marks and in deliberate or reckless disregard of
Kool Paks rights, and therefore this case is exceptional under 15 U.S.C. 1117, entitling Kool
Pak to an award of its reasonable attorney fees.
CLAIMS FOR RELIEF 14-20
(Common Law Trademark Infringement of the KOOL Marks)
47.
48.
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49.
By reason of Kool Paks prior use of the KOOL Marks (see paragraph 6) for
refrigerated trucking services and related products and services, Kool Pak has acquired common
law trademark rights in the KOOL Marks for such services.
50.
Kool Trans use of KOOLTRANS for refrigerated trucking services has caused
and/or is likely to cause confusion, and therefore infringes Kool Paks rights in the KOOL
Marks. Upon information and belief, Kool Pak has been and will continue to be damaged by
Kool Trans actions unless Kool Trans is enjoined from using KOOLTRANS.
51.
Kool Trans actions have been willful and malicious, with full knowledge of Kool
Paks trademark rights in the KOOL Marks and in deliberate or reckless disregard of Kool Paks
rights. As a consequence, Kool Pak is entitled to injunctive relief, damages, its costs, Kool
Trans profits, and punitive damages.
PRAYER
Kool Pak prays for judgment in its favor on all claims for relief and for an Order:
(a)
KOOL Marks under 15 U.S.C. 1114, that Kool Pak has been damaged by such infringement,
that such infringement was willful, malicious, and in deliberate or reckless disregard of the rights
of Kool Pak;
(b)
mistake, or to deceive as to the origin, sponsorship, affiliation, or association of Kool Trans or its
services with Kool Pak under 15 U.S.C. 1125(a), that Kool Pak has been damaged by such
confusion, mistake, or deception, and that Kool Trans conduct was willful and malicious and in
deliberate or reckless disregard of the rights of Kool Pak;
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(c)
that Kool Trans use of KOOLTRANS infringes Kool Paks KOOL Marks
under the common law, that Kool Pak has been damaged by such infringement, and that such
infringement was willful and malicious and in deliberate or reckless disregard of the rights of
Kool Pak;
(d)
members and assigns, and all those in privity with them from using KOOLTRANS;
(e)
awarding Kool Pak its costs, its actual damages, a trebling of such
that this is an exceptional case and for an award of Kool Paks costs and
awarding punitive damages to Kool Pak under the common law; and
(h)
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