Case 3:14-cv-01913-SI

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Filed 12/01/14

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Elizabeth Tedesco Milesnick, OSB No. 050933

elizabeth.milesnick@millernash.com
MILLER NASH LLP
3400 U.S. Bancorp Tower
111 S.W. Fifth Avenue
Portland, Oregon 97204
Telephone: (503) 224-5858
Facsimile: (503) 224-0155
Attorneys for Plaintiff

UNITED STATES DISTRICT COURT

DISTRICT OF OREGON
PORTLAND DIVISION

KILLER BURGER, INC., an Oregon

corporation,

Case No. ________________

COMPLAINT FOR DECLARATORY
JUDGMENT OF NON-INFRINGEMENT OF
TRADEMARK RIGHTS

Plaintiff,
v.

DEMAND FOR JURY TRIAL

GRINDHOUSE HOLDINGS, LLC

DBA GRINDHOUSE KILLER
BURGERS, a Georgia limited liability
company,
Defendant.

Plaintiff, Killer Burger, Inc. ("Killer Burger"), states and pleads as follows:

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Complaint for Declaratory Judgment

PDXDOCS:2053345.1

MILLER NASH LLP

AT T OR NE YS AT L AW
T E LE P H ONE : ( 5 0 3 ) 2 2 4 -5 8 5 8
3 4 0 0 U. S. B AN CO RP T OW E R
1 1 1 S.W . FI FT H AVE N UE
P ORT L A N D , O RE GO N 9 7 2 0 4

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NATURE OF ACTION
1.

This is an action for declaration of rights under the Lanham Act, 15 USC

1051 et seq. ("Lanham Act"). Killer Burger seeks a declaration from this Court that its use of
its federally registered trademark KILLER BURGER for "burgers contained in bread rolls" and
common law trademark rights in KILLER BURGER for restaurants does not infringe or
otherwise violate the rights of defendant Grindhouse Killer Burgers ("Grindhouse").
PARTIES
2.

Killer Burger is an Oregon corporation with its principal place of business

at 510 S.W. Third Avenue, Portland, Oregon 97204.

3.

Grindhouse is a Georgia limited liability company with its principal place

of business at 293 Prospect Place, Atlanta, Georgia 30312.

JURISDICTION AND VENUE
4.

This Court has jurisdiction of this civil action under the Declaratory

Judgments Act, 28 USC 2201 and 2201, and the Lanham Act, 15 USC 1125(a) and (c).
5.

Venue is proper in this Court under 28 USC 1391 because Grindhouse

has contacted, called, visited, and sent the correspondence that created the present dispute to
Killer Burger in this district, with a substantial part of the events or omissions giving rise to the
claim to be adjudicated in this action occurring in this district.

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Complaint for Declaratory Judgment

PDXDOCS:2053345.1

MILLER NASH LLP

AT T OR NE YS AT L AW
T E LE P H ONE : ( 5 0 3 ) 2 2 4 -5 8 5 8
3 4 0 0 U. S. B AN CO RP T OW E R
1 1 1 S.W . FI FT H AVE N UE
P ORT L A N D , O RE GO N 9 7 2 0 4

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CLAIM FOR RELIEF

(Declaratory Judgment of Non-Infringement)
6.

Since at least as early as September 2010, Killer Burger has been using the

trademark KILLER BURGER in connection with restaurants that serve hamburgers. Killer
Burger has enjoyed substantial success and acclaim, expanding its operation to seven locations
across Oregon and in Washington.
7.

On October 11, 2010, Killer Burger filed an application with the United

States Patent and Trademark Office ("PTO") to register the KILLER BURGER trademark for
"burgers contained in bread rolls." During the course of the examination, the PTO found no
likelihood of confusion with any preexisting marks containing the phrase "KILLER BURGER."
Killer Burger's KILLER BURGER mark registered on April 10, 2012 ("the KILLER BURGER
mark"). The registration certificate is attached hereto as "Exhibit A."
8.

On February 25, 2014, Killer Burger received a letter from Grindhouse

stating that Grindhouse owns and operates restaurants in the greater Atlanta, Georgia, area under
the registered service marks GRIND HOUSE KILLER BURGERS (Reg. No. 3818027) and
LIVE FAST, EAT WELL! GRIND HOUSE KILLER BURGERS WOMEN CRY FOR IT!
MEN DIE FOR IT! (Reg. No. 3907542) (collectively, the "GRINDHOUSE marks"). The
Grindhouse marks are pictured below:

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Complaint for Declaratory Judgment

PDXDOCS:2053345.1

MILLER NASH LLP

AT T OR NE YS AT L AW
T E LE P H ONE : ( 5 0 3 ) 2 2 4 -5 8 5 8
3 4 0 0 U. S. B AN CO RP T OW E R
1 1 1 S.W . FI FT H AVE N UE
P ORT L A N D , O RE GO N 9 7 2 0 4

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9.

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Grindhouse's February 25, 2014, letter stated that Grindhouse was

"concerned" that "as one or both of" Killer Burger and Grindhouse "expand the geographic scope
of their operations, they may bump into each other," and confusion "may arise" from the two
companies' respective uses of the KILLER BURGER mark and the GRINDHOUSE marks.
10.

During the next eight months, Killer Burger and Grindhouse, through

counsel and also directly between the companies' principals, participated in telephone calls,
e-mail exchanges, and even met in-person in an effort to resolve Grindhouse's concerns about the
two companies' use of their respective trademarks.
11.

During these communications, Killer Burger pointed out that, as the PTO

confirmed by allowing registration of the KILLER BURGER mark over the already-registered
GRINDHOUSE marks, there is no likelihood of confusion between the KILLER BURGER mark
and the GRINDHOUSE marks. Killer Burger pointed to the important differences between the
marks and the companies' logos, to the very different locations where the marks are used, the
different themes of the respective restaurants, and to the many coexisting uses of the phrase
"killer burger" in the food industry, among other things. Finally, Killer Burger proposed, and
Grindhouse rejected, several bases on which the parties could coexist in the market.
12.

On October 30, 2014, Grindhouse sent Killer Burger another letter,

making an (unacceptable) coexistence proposal of its own, but also stating "we are of the opinion
that Killer Burger infringes on Grindhouse Killer Burger's trademark. If we are forced into
litigation, we would likely seek that the name 'Killer Burger' be removed from all existing
restaurants, since we believe that it infringes on our valid trademark due to the likelihood and
actual confusion that is caused by your restaurants' name."

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Complaint for Declaratory Judgment

PDXDOCS:2053345.1

MILLER NASH LLP

AT T OR NE YS AT L AW
T E LE P H ONE : ( 5 0 3 ) 2 2 4 -5 8 5 8
3 4 0 0 U. S. B AN CO RP T OW E R
1 1 1 S.W . FI FT H AVE N UE
P ORT L A N D , O RE GO N 9 7 2 0 4

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The letter concluded, "We want to give you time to deliberate with your

partners on this proposal, but this discussion has already gone on for nearly five months since
our first contact with your attorney. If we do not receive a response from you by December 1,
then we will proceed under the impression that you have rejected our offer without presenting a
counter offer."
14.

Grindhouse's threats have created a reasonable apprehension of litigation

and have brought into question Killer Burger's right to use the KILLER BURGER mark.
15.

Killer Burger's use of the KILLER BURGER mark does not constitute

trademark infringement under the Lanham Act or at common law with respect to the
GRINDHOUSE marks.
16.

An actual and justiciable controversy exists between the parties based on

Grindhouse's claims and demands. Killer Burger wishes to resolve any controversy and
determine that it has not and will not, by continued use of the KILLER BURGER mark, infringe
or otherwise violate the rights of Grindhouse in its GRINDHOUSE marks.
17.

Killer Burger is entitled to a declaration and judgment that Killer Burger's

use of the KILLER BURGER mark does not constitute trademark infringement under the
Lanham Act or at common law with respect to the GRINDHOUSE marks.

Page 5 -

Complaint for Declaratory Judgment

PDXDOCS:2053345.1

MILLER NASH LLP

AT T OR NE YS AT L AW
T E LE P H ONE : ( 5 0 3 ) 2 2 4 -5 8 5 8
3 4 0 0 U. S. B AN CO RP T OW E R
1 1 1 S.W . FI FT H AVE N UE
P ORT L A N D , O RE GO N 9 7 2 0 4

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PRAYER FOR RELIEF

WHEREFORE, Killer Burger respectfully requests that the Court enter judgment
against Grindhouse as follows:
A.

Declaring that Killer Burger's use of its federally registered KILLER BURGER
mark does not infringe or otherwise violate the trademark rights claimed by
Grindhouse; and

B.

Awarding such further and other relief as the Court deems just and proper.
DATED this 1st day of December, 2014.
MILLER NASH LLP

s/ Elizabeth Tedesco Milesnick

Elizabeth Tedesco Milesnick
OSB No. 050933
elizabeth.milesnick@millernash.com
Phone: (503) 224-5858
Fax: (503) 224-0155
Attorneys for Plaintiff

Page 6 -

Complaint for Declaratory Judgment

PDXDOCS:2053345.1

MILLER NASH LLP

AT T OR NE YS AT L AW
T E LE P H ONE : ( 5 0 3 ) 2 2 4 -5 8 5 8
3 4 0 0 U. S. B AN CO RP T OW E R
1 1 1 S.W . FI FT H AVE N UE
P ORT L A N D , O RE GO N 9 7 2 0 4