Case 6:14-cv-00069-AA

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Carl D. Crowell, OSB No. 982049 email: crowell@kite.com CROWELL LAW P.O. Box 923 Salem, OR 97308 (503) 581-1240 Of attorneys for plaintiff UNITED STATES DISTRICT COURT DISTRICT OF OREGON EUGENE DIVISION CTS WHOLESALE, LLC, Plaintiff, v. SOUTH BAY TRADING, INC., a California Corporation, Defendant. COMPLAINT - DECLARATORY JUDGMENT OF NON-INFRINGEMENT TRADEMARK Plaintiff CTS Wholesale, LLC, alleges: NATURE OF THE ACTION 1. This is a civil action for a declaratory judgment to hold plaintiff is not liable for COMPLAINT DECLARATORY JUDGMENT OF NON-INFRINGEMENT TRADEMARK Case No.: 6:14-cv-00069

infringing rights in U.S. Trademark Registration Nos. 3,870,581 and 4,024525, or that any such rights asserted by defendant are invalid and unenforceable. THE PARTIES 2. Plaintiff CTS Wholesale, LLC, is an Oregon corporation with a principal place of

business in Salem, Oregon.

COMPLAINT

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3.

On information and belief, defendant South Bay Trading, Inc. (South Bay) is a

corporation organized and existing under the laws of the State of California, with a principal office in Ontario, California, doing business nationwide. 4. Both parties are in the business of importing and selling novelty items, principally

sunglasses. JURISDICTION AND VENUE 5. This action is pursuant to The Lanham Act, 15 U.S.C. 1051 et seq., the Declaratory

Judgment Act, 28 U.S.C. 2201 and 2202 and other relevant laws. 6. This Court has subject matter jurisdiction pursuant to 28 U.S.C. 1331, 1338(a),

2201(a) and 2202. 7. Venue is proper in this district under 28 U.S.C. 1391(b) and (c) because a substantial

part of the events which give rise to the claims herein occurred in this district and because South Bay is subject to personal jurisdiction in this district. 8. On information and belief, South Bay is subject to personal jurisdiction in the District of

Oregon consistent with the principles of due process and the Oregon Long Arm Statute, and because South Bay offers its products for sale nationwide and has transacted business in this District. More specifically South Bay has made purchases from plaintiff in this district an attempt to fabricate jurisdiction in California and made express statements and demands against plaintiff in this district. GENERAL ALLEGATIONS 9. South Bay has filed a number of trademarks, including U.S. Trademark Registration Nos.

3,870,581 and 4,024525.

COMPLAINT

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10.

South Bay has stated a specific intent to file suit against plaintiff and demands plaintiff

comply with demands beyond South Bays claim of right. 11. On October 28, 2013, South Bay did in fact file suit against plaintiff in the Central

District of California, Case No. 2:13-cv-07944, alleging Lanham Act violations and other claims. 12. On January 13, 2014, by order of U.S. District Court Judge R. Gary Klausner, the

California complaint South Bay filed against plaintiff was dismissed for a lack of personal jurisdiction. 13. 14. There presently exists a justiciable controversy regarding the rights of the parties. On information and belief, South Bay intends to file suit again against plaintiff and

absent a declaration of non-infringement plaintiff will suffer and continues to suffer injury. 15. Plaintiff is not liable for infringing any valid rights defendant may claim in U.S.

Trademark Registration Nos. 3,870,581 and 4,024525 and defendant has no rights against plaintiffs in either of the relevant marks. 16. Plaintiff seeks a declaratory judgment that they have not and do not infringe any

enforceable rights in U.S. Trademark Registration Nos. 3,870,581 and 4,024525 and that they are not otherwise liable to defendant. PRAYER FOR RELIEF WHEREFORE, plaintiff prays for relief as follows: I. For entry of a judgment declaring plaintiff is not liable for any infringement of U.S. Trademark Registration Nos. 3,870,581 and 4,024525, or any related claims of South Bay; II. For entry of a preliminary and permanent injunction enjoining South Bay from pursuing infringement litigation or threatening litigation related to U.S. Trademark

COMPLAINT

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Registration Nos. 3,870,581 and 4,024525 against plaintiff or any of plaintiffs customers or business relations; III. For costs and fees related to this action; and IV. That plaintiff have such other and further relief as the court shall deem proper.

DATED: January 13, 2014.

Respectfully submitted, CROWELL LAW /s/ Carl D. Crowell Carl D. Crowell, OSB No. 982049 email: crowell@kite.com P.O. Box 923 Salem, OR 97308 (503) 581-1240 Of attorneys for the plaintiff

COMPLAINT

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