throbber

`
`
`
`Case 2:20-cv-01170 Document 1 Filed 07/31/20 Page 1 of 15
`
`
`
`
`
`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF WASHINGTON
`AT SEATTLE
`
`
`Case No.
`
`FEDERAL COMPLAINT FOR
`DAMAGES, INJUNCTIVE RELIEF,
`AND OTHER RELIEF BASED ON
`TRADEMARK INFRINGEMENT,
`TRADEMARK DILUTION, UNFAIR
`COMPETITION, AND UNJUST
`ENRICHMENT
`JURY DEMAND
`
`
`)))))))))))))
`
`
`)
`
`
`RICELAND FOODS, INC.,
`
`
`v.
`
`RICELAND TRADING, LTD d/b/a
`RICELAND FOODS LTD, and
`WISMETTAC ASIAN FOODS INC. d/b/a
`SEASIA,
`
`
`Plaintiff,
`
`Defendants.
`
`
`
`
`Plaintiff Riceland Foods, Inc., an Arkansas corporation (or “Plaintiff” or “Riceland”), by
`
`and through its undersigned Counsel, files this Complaint against Defendants Riceland Trading,
`Ltd d/b/a Riceland Foods, Ltd (“Riceland Trading”) and Wismettac Asian Foods Inc., d/b/a
`SEASIA (“Wismettac”) (each a “Defendant” and collectively, the “Defendants”). In support of
`its Complaint, Plaintiff alleges as follows:
`This is an action under the Trademark Laws of the United States, Title 15 U.S.C.
`1.
`§§ 1051, et seq., for trademark infringement, unfair competition, and dilution pursuant to the
`Lanham Act, 15 U.S.C. §§ 1114 and 1125(a) and (c), respectively. In addition this is an action,
`for trademark infringement, dilution and unfair competition, in violation of the common law and
`the statutes of the state of Washington.
`
`COMPLAINT - 1
`
`
`133302.0001/8131640.1
`
`LANE POWELL PC
`1420 FIFTH AVENUE, SUITE 4200
`P.O. BOX 91302
`SEATTLE, WA 98111-9402
`206.223.7000 FAX: 206.223.7107
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`
`

`

`
`
`Case 2:20-cv-01170 Document 1 Filed 07/31/20 Page 2 of 15
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`
`In an attempt to legitimatize their unauthorized activities, the Defendants market
`2.
`and sell counterfeit and potentially hazardous rice products using the Plaintiff’s trademarks
`without authorization, thereby creating consumer confusion as to whether such products are
`affiliated, endorsed, and/or sponsored by the Plaintiff. Alternatively, Defendants are using the
`Plaintiff’s trademarks without authorization on competing and related rice products. The
`Defendants’ actions, as detailed below, maliciously tread upon the goodwill of the Riceland
`brand and have harmed and continue to harm the Plaintiff. Consequently, Plaintiff seeks
`damages, equitable relief including a preliminary and permanent injunction against the
`Defendants, and reimbursement of its attorneys’ fees and costs.
`PARTIES
`Plaintiff Riceland Foods, Inc. is a cooperative cooperation organized under the
`3.
`laws of the state of Arkansas, with its principal place of business in Stuttgart, Arkansas. Plaintiff
`is an exporter of rice and other grains, rice products, lecithin and vegetable oil.
`Upon information and belief, Riceland Trading is a foreign corporation in
`4.
`Bangkok, Thailand, with its principal place of business at 33rd Floor Sinn Sathorn Tower,
`77/140 Krungthonburi Rd. Bangkok, Thailand 10600.
`Upon information and belief, Wismettac (formerly Nishimoto Trading Co., Ltd.),
`5.
`is a Washington corporation, with its principal place of business at 19931 72nd Ave. S, Ste 101,
`Kent, WA, 98032, within this judicial district.
`Upon information and belief, SEASIA is an active trade name for Wismettac.
`6.
`JURISDICTION AND VENUE
`This Court has jurisdiction under 28 U.S.C. § 1338 as this civil action arises under
`7.
`an Act of Congress related to trademarks. This Court has jurisdiction under 28 U.S.C. § 1367
`and the doctrine of pendent jurisdiction over the state law claims as substantial and so related to
`the claims arising under federal law that they form part of the same case and controversy under
`Article III of the United States Constitution.
`
`COMPLAINT - 2
`
`
`133302.0001/8131640.1
`
`LANE POWELL PC
`1420 FIFTH AVENUE, SUITE 4200
`P.O. BOX 91302
`SEATTLE, WA 98111-9402
`206.223.7000 FAX: 206.223.7107
`
`

`

`
`
`Case 2:20-cv-01170 Document 1 Filed 07/31/20 Page 3 of 15
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`
`This Court may exercise jurisdiction over the Defendants because the causes of
`8.
`action alleged herein arose in whole or in part in Washington. Upon information and belief, the
`Defendants are providing, advertising, selling, and/or offering to sell goods and services bearing
`the infringing RICELAND Marks and, upon information and belief, have made sales in this
`judicial district.
`Venue is proper in this district pursuant to 28 U.S.C. § 1391(b) on the ground that
`9.
`the infringing acts alleged herein arose, in whole or in part, within this judicial district.
`BACKGROUND FACTS
`PLAINTIFF’S BUSINESS AND INTELLECTUAL PROPERTY RIGHTS
`I.
`Plaintiff is the world’s largest miller and marketer of rice, as well as a distributor
`10.
`of agricultural products, including rice, for human consumption.1
`Plaintiff owns all right, title, and interest in and to the mark “RICELAND,” and
`11.
`has obtained Federal Trademark and Service Mark Registrations for the mark “RICELAND”
`for a wide range of food and other products, including, inter alia, rice products, namely, rice
`flour, rice bran and rice mixes; oil, vegetable oil, rice oil, shortening and dried beans. Plaintiff’s
`Federal Trademark and Service Mark Registrations for the mark “RICELAND” include the
`following word and design marks registered on the Principal Register of the United States Patent
`and Trademark Office, all but two of which are incontestable pursuant to 15 U.S.C. § 1065:
`
`
`Reg. No.
`U.S. Reg. No.
`2,552,665
`
`Reg. Date
`March 26, 2002
`
`Mark
`RICELAND
`
`Goods
`Classes
`Classes 29, 30 Oil, namely,
`vegetable oil and
`rice oil;
`shortening.
`
`Rice; rice
`products, namely,
`rice flour and rice
`bran; and rice
`mixes.
`
`
`1
`Inc. Website
`Foods,
`Riceland
`See About
`Riceland,
`available
`https://www.riceland.com/pages/about-riceland/ (Last Accessed, April 6, 2020).
`COMPLAINT - 3
`LANE POWELL PC
`1420 FIFTH AVENUE, SUITE 4200
`
`P.O. BOX 91302
`SEATTLE, WA 98111-9402
`206.223.7000 FAX: 206.223.7107
`
`133302.0001/8131640.1
`
`at
`
`

`

`
`
`Case 2:20-cv-01170 Document 1 Filed 07/31/20 Page 4 of 15
`
`RICELAND
`
`Class 29
`
`Dried beans
`
`U.S. Reg. No.
`5,507,521
`U.S. Reg. No.
`1,913,625
`
`U.S. Reg. No.
`442,236
`
`U.S. Reg. No.
`1,067,790
`
`July 3, 2008
`
`August 22, 1995
`
`March 15, 1949
`
`June 14, 1977
`
`U.S. Reg. No.
`5,508,644
`
`July 3, 2018
`
`Class 30
`
`Rice
`
`Class 30
`
`Rice
`
`Class 43
`
`Classes 29, 30 Vegetable
`shortening and
`soybean salad and
`cooking oils;
`Rice.
`Mobile café
`services for
`providing food
`and drink;
`Providing of food
`and drink via a
`mobile truck.
`
`RICELAND
`(AND DESIGN)
`(BLACK &
`WHITE)
`
`RICELAND
`(STYLIZED)
`
`
`RICELAND
`FOODS
`
`RICELAND
`MOBILE CAFÉ
`FAMILY
`FARMER
`OWNED (AND
`DESIGN)
`
`
`RICELAND
`PERFECTED
`RICE
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`
`Class 30
`
`Rice
`
`U.S. Reg. No.
`2,025,242
`
`December 24,
`1996
`
`(collectively, the “RICELAND Marks”).
`Plaintiff is also the sole and exclusive owner of common law trademark rights for
`12.
`RICELAND. For example, Plaintiff uses the aforementioned trademarks in-state commerce for
`Washington State and has done so since at least 2005.
`Plaintiff owns all right, title, and interest in and to the mark “RICELAND” in
`13.
`various countries around the world, including, inter alia, Canada, China, Panama, and Taiwan.
`
`COMPLAINT - 4
`
`
`133302.0001/8131640.1
`
`LANE POWELL PC
`1420 FIFTH AVENUE, SUITE 4200
`P.O. BOX 91302
`SEATTLE, WA 98111-9402
`206.223.7000 FAX: 206.223.7107
`
`

`

`
`
`Case 2:20-cv-01170 Document 1 Filed 07/31/20 Page 5 of 15
`
`A list of countries where Plaintiff has registrations for the RICELAND Marks, among others, is
`attached hereto as Exhibit A.
`Plaintiff has used several of the RICELAND Marks continuously and exclusively
`14.
`in interstate commerce since at least 1946. The Marks have been used variously on and with
`labeling and packaging of food and in advertising and promotional material. Examples of the
`RICELAND Marks used in advertising throughout the years are included below.
`
`
`
`
`
`
`
`
`
`
`Plaintiff ships its rice and rice products bearing the RICELAND Marks in various
`15.
`different sizes, including several that are sized primarily for consumers. Plaintiff uses other sized
`
`
`
`COMPLAINT - 5
`
`
`133302.0001/8131640.1
`
`LANE POWELL PC
`1420 FIFTH AVENUE, SUITE 4200
`P.O. BOX 91302
`SEATTLE, WA 98111-9402
`206.223.7000 FAX: 206.223.7107
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`
`

`

`
`
`Case 2:20-cv-01170 Document 1 Filed 07/31/20 Page 6 of 15
`
`packaging as well, including packaging that comes in twenty-five (25) and fifty (50) pound unit
`increments. Since August 1, 2019, Plaintiff has shipped 233,433 of these larger units, or over
`10,000,000 pounds of rice throughout the Northwest region of the United States, including in
`the states of Oregon and Washington.
`In or around March 2020, Plaintiff became aware of a foreign market reaction due
`16.
`to the global COVID-19 pandemic. Upon information and belief, COVID-19 caused an increase
`in demand for rice and rice products. As a result, grocery stores and other retail distributors have
`seen their shelves containing rice product and rice supplies emptied due to mass consumer
`“hoarding.”2
`Upon information and belief, many stores in the Northwest and West coast
`17.
`regions, including some of the Plaintiff’s own customers, may have shortages and high demand
`for rice in the weeks and months to come as markets struggle to fill market holes caused by
`COVID-19.
`II. DEFENDANTS’ BUSINESSES AND INFRINGING ACTIVITIES
`According to Defendant Riceland Trading’s website, Defendant was established
`18.
`in 1982 and is a leading rice exporter in Thailand.3
`According to Defendant Wismettac’s website, Defendant was established in
`19.
`Kobe, Japan in 1912 and is “one of the oldest and most experienced importer, wholesaler and
`distributor of Asian food products in North America.”4
`
`
`2 See, e.g., Su-Lin Tan and Amanda Lee, Coronavirus will not cause global rice shortage unless
`panic buying and export bans persist, South China Morning Post, available at
`https://www.scmp.com/economy/global-economy/article/3077793/coronavirus-will-not-cause-
`global-rice-shortage-unless-panic (Published Apr. 1, 2020; Last Accessed, July 29, 2020);
`‘We’ve never sold out of pork butt before’: Inside 22 L.A. grocery stores , Los Angeles Times,
`available at https://www.latimes.com/business/story/2020-03-13/coronavirus-grocery-stores
`(Published Mar. 13, 2020; Last Accessed July 29, 2020) (stating that as the number of cases
`continues to increase, shoppers have flocked to stores to stock up on shelf-stable items ranging
`from frozen foods and canned goods to rice and bread).
`3 See About Us, Riceland Foods LTD, available at http://www.riceland.co.th/engabout.htm (Last
`Accessed, July 29, 2020).
`4 See About, Wismettac Asian Foods, Inc., available at http://www.wismettacusa.com/about/#1
`(Last Accessed, July 29, 2020).
`COMPLAINT - 6
`
`
`LANE POWELL PC
`1420 FIFTH AVENUE, SUITE 4200
`P.O. BOX 91302
`SEATTLE, WA 98111-9402
`206.223.7000 FAX: 206.223.7107
`
`133302.0001/8131640.1
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`
`

`

`
`
`Case 2:20-cv-01170 Document 1 Filed 07/31/20 Page 7 of 15
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`
`Recently Plaintiff became aware of Defendants infringing use of the RICELAND
`
`20.
`Marks.
`Upon information and belief, in or about March 2020, Defendants began
`21.
`marketing, selling and offering to sell rice in packaging bearing the RICELAND Marks (the
`“Counterfeit Rice”). Since March 2020, Defendants have sold seventy (70) units of fifty (50)
`pound bags of rice, or at least three thousand, five hundred (3,500) pounds of Counterfeit Rice
`to retail outlets in the Washington region and have, according to customer tracking information,
`sold these bags of rice to consumers. A copy of the Defendants’ infringing use of the
`RICELAND Marks, i.e., the Counterfeit Rice, is attached hereto as Exhibit B.
`Upon information and belief, Defendant Riceland Trading imports the Counterfeit
`22.
`Rice to Defendant Wismettac at 19931 72nd Ave. S, Ste 101, Kent, WA, 98032.
`Upon information and belief, Defendants are using the RICELAND Marks to sell
`23.
`Counterfeit Rice in order to fill rice shortages caused by COVID-19 in the Washington region.5
`Upon information and belief, Defendants are using and will continue to use the
`24.
`Plaintiff’s brand and goodwill as a trusted United States rice manufacturer to circumvent the
`health and environmental standards imposed on foreign agricultural exporters. Thus, the
`marketing and sale of Defendants’ Counterfeit Rice and use of the RICELAND Marks also pose
`a serious health risk to the general public.6
`
`5 See, e.g., Rajendra Jadhav, Naveen Thukral, and Nigel Hunt, Reuters, Coronavirus Upends
`Shock,
`at
`Global
`Food
`Supply Chains
`in
`Latest
`Economic
`available
`https://www.reuters.com/article/us-health-coronavirus-food-supplies-insi/coronavirus-upends-
`global-food-supply-chains-in-latest-economic-shock-idUSKBN21L2V7 (Published Apr. 3,
`2020; Last Accessed July 29, 2020) (noting that Thailand, the second-largest rice exporter and
`where the Defendant is located, is taking advantage of higher rice prices caused by COVID-19
`by increasing exports from stockpiles); Alexandra Kelley, Prices on Some Food Items Are
`Surging During Coronavirus Pandemic, The Hill, available at https://thehill.com/changing-
`america/sustainability/environment/490331-wheat-rice-prices-surge-as-consumers-stock-up
`(Published Mar. 31, 2020; Last Accessed July 29, 2020) (stating that Americans are poised to
`see a spike in prices and demand for rice).
`6 Although COVID-19 is generally thought to be spread from person-to-person and there is
`currently no evidence to support transmission associated with food, health officials are still
`learning about COVID-19. There have been widespread instances concerning mass infection of
`persons who work in food production and processing and the Centers for Disease Control and
`Prevention (“CDC”) have issued food safety guidelines. See, e.g., Hugh Bronstein, Argentina
`Suspends Exports From Eight Meat Plants To China After COVID-19 Found, Reuters, available
`COMPLAINT - 7
`LANE POWELL PC
`1420 FIFTH AVENUE, SUITE 4200
`
`P.O. BOX 91302
`SEATTLE, WA 98111-9402
`206.223.7000 FAX: 206.223.7107
`
`133302.0001/8131640.1
`
`

`

`
`
`Case 2:20-cv-01170 Document 1 Filed 07/31/20 Page 8 of 15
`
`The health and food safety practices employed by Defendants’ in the creation,
`25.
`processing, and distribution of the Counterfeit Rice are unknown. Accordingly, it is imperative
`that Defendants’ use of the RICELAND Marks during the global pandemic are curbed
`immediately.
`The unauthorized use of the RICELAND Marks directly infringes on the family
`26.
`of RICELAND trademarks owned by Plaintiff. Upon information and belief, the Counterfeit
`Rice has been shipped into the United States (and this judicial district) from South Korea, China,
`Thailand, Hong Kong, Taiwan, Singapore, Malaysia, Sri Lanka, Vietnam, and Bermuda. The
`RICELAND Marks are recorded with United States Customs and Border Protection.
`As a direct and proximate result of Defendants’ infringement of Plaintiff’s
`27.
`RICELAND Marks, Plaintiff has suffered and will continue to suffer great damage and
`irreparable harm that cannot fully be compensated or measured in money. Plaintiff is thereby
`entitled to injunctive relief against Defendants, as well as all other remedies available under the
`Lanham Act including, without limitation, damages in an amount to be proven at trial, statutory
`penalties, disgorgement of Defendants’ profits, and costs and attorneys’ fees.
`FIRST CLAIM FOR RELIEF AGAINST ALL DEFENDANTS
`FEDERAL TRADEMARK INFRINGEMENT, 15 U.S.C. § 1114
`Plaintiff hereby refers to paragraphs 1 through 27, inclusive, of this Complaint
`28.
`and by this reference incorporates the same as though fully set forth herein.
`Plaintiff holds United States registered trademarks for the RICELAND Marks
`29.
`which are in full force, effective and enforceable.
`
`
`at https://www.reuters.com/article/us-health-coronavirus-argentina-meat/argentina-halts-china-
`six-meat-plants-exports-after-covid-19-found-idUSKCN24G2TQ (Published July 15, 2020;
`Last Accessed July 29, 2020) (discussing Argentina’s suspension of exports after coronavirus
`cases emerged among employees in food plants); Coronavirus Disease 2019 Food Safety, Centers
`for Disease Control and Prevention available at https://www.cdc.gov/coronavirus/2019-
`ncov/daily-life-coping/food-and-COVID-19.html (Last Updated June 25, 2020; Last Accessed
`July 29, 2020).
`COMPLAINT - 8
`
`
`LANE POWELL PC
`1420 FIFTH AVENUE, SUITE 4200
`P.O. BOX 91302
`SEATTLE, WA 98111-9402
`206.223.7000 FAX: 206.223.7107
`
`133302.0001/8131640.1
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`
`

`

`
`
`Case 2:20-cv-01170 Document 1 Filed 07/31/20 Page 9 of 15
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`
`The Defendants are, without consent or authorization, intentionally and
`30.
`knowingly using, reproducing, manufacturing, marketing, displaying and/or distributing, in
`interstate commerce, Counterfeit Rice bearing Plaintiff’s RICELAND Marks.
`The Defendants are, without consent and in bad faith, using and reproducing in
`31.
`interstate commerce Plaintiff’s RICELAND Marks to bolster the sales of their infringing
`Counterfeit Rice, thereby misappropriating the goodwill associated with the Plaintiff’s brand.
`Alternatively, the Defendants are using and reproducing in interstate commerce
`32.
`Plaintiff’s RICELAND Marks without authorization to bolster the sales of their own rice
`products, thereby misappropriating the goodwill associated with the Plaintiff’s brand.
`The Defendants’ conduct has caused and continues to cause, damage and injury
`33.
`to Plaintiff’s brand, goodwill and reputation.
`In manufacturing, marketing, offering to sell, and selling Counterfeit Rice, the
`34.
`Defendants’ copy, reproduce, and in some instances, remove, Plaintiff’s trademark and
`copyright notices.
`The Lanham Act defines a “counterfeit” as “a spurious mark which is identical to,
`35.
`or substantially indistinguishable from, a registered mark.” 15 U.S.C. §1127. Indeed the
`designation that appears on the Defendants’ products are “counterfeit,” and implemented in the
`same manner as the RICELAND Marks appear on genuine Riceland merchandise. As such,
`likelihood of confusion is presumed.
`The Defendants’ use of the RICELAND Marks, which are identical to Plaintiff’s
`36.
`federally registered marks and used on identical, albeit non-genuine goods, constitute the use of
`a counterfeit mark under 15 U.S.C. § 1116(d).
`The Defendants are engaged in the creation, marketing, sale and distribution of
`37.
`counterfeit rice products bearing the RICELAND Marks. The Defendants’ conduct thus
`constitutes trademark infringement in violation of § 32(1) of the Lanham Act, 15 U.S.C. §
`1114(1).
`
`COMPLAINT - 9
`
`
`133302.0001/8131640.1
`
`LANE POWELL PC
`1420 FIFTH AVENUE, SUITE 4200
`P.O. BOX 91302
`SEATTLE, WA 98111-9402
`206.223.7000 FAX: 206.223.7107
`
`

`

`
`
`Case 2:20-cv-01170 Document 1 Filed 07/31/20 Page 10 of 15
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`
`SECOND CLAIM FOR RELIEF AGAINST ALL DEFENDANTS
`FEDERAL UNFAIR COMPETITION/FALSE DESIGNATION OF ORIGIN,
`15 U.S.C. § 1125(a)
`Plaintiff hereby refers to paragraphs 1 through 37, inclusive, of this Complaint
`38.
`and by this reference incorporates the same as though fully set forth herein.
`The Defendants’ use of the RICELAND Marks in commerce, is a false
`39.
`designation of origin, a false or misleading description of fact, or a false or misleading
`representation of fact.
`The Defendants’ use of the RICELAND Marks is likely to cause confusion or to
`40.
`cause mistake, or to deceive as to the origin, sponsorship, or approval of Plaintiff’s goods,
`services, and/or commercial activities.
`The Defendants’ conduct violates 15 U.S.C. § 1125(a).
`41.
`42.
`The Defendants’ conduct has caused damage to Plaintiff. The Defendants’
`conduct will cause further irreparable injury to Plaintiff if it is not restrained by this Court from
`further violation of Plaintiff’s intellectual property rights.
`Plaintiff’s remedy at law is not by itself adequate. Plaintiff has suffered, and
`43.
`continues to suffer, irreparable harm such that Plaintiff is entitled to injunctive relief.
`Accordingly, the Defendants’ conduct constitutes unfair competition pursuant to
`44.
`15 U.S.C. § 1125.
`The Defendants’ bad faith violations of 15 U.S.C. § 1125 also entitles Plaintiff to
`45.
`an Order from the Court directing the forfeiture and seizure of the Counterfeit Rice.
`Plaintiff is therefore entitled to injunctive relief under 15 U.S.C. § 1116 and
`46.
`recovery of damages from the Defendants pursuant to 15 U.S.C. § 1117.
`THIRD CLAIM FOR RELIEF AGAINST ALL DEFENDANTS
`DILUTION, 15 U.S.C. § 1125(c)
`Plaintiff hereby refers to paragraphs 1 through 46, inclusive, of this Complaint
`47.
`and by this reference incorporates the same as though fully set forth herein.
`
`COMPLAINT - 10
`
`
`133302.0001/8131640.1
`
`LANE POWELL PC
`1420 FIFTH AVENUE, SUITE 4200
`P.O. BOX 91302
`SEATTLE, WA 98111-9402
`206.223.7000 FAX: 206.223.7107
`
`

`

`
`
`Case 2:20-cv-01170 Document 1 Filed 07/31/20 Page 11 of 15
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`
`Plaintiff is the owner of the famous registered trademark RICELAND. The mark
`48.
`is inherently distinctive and has acquired distinctiveness through long and continuous use. The
`extent of advertising and publicity associated with the RICELAND Marks is such that it is well
`known throughout a substantial portion of the United States.
`Plaintiff’s long, continuous and extensive use of the RICELAND Marks has
`49.
`caused the RICELAND Marks to become famous, as defined under 15 U.S.C. § 1125(c).
`The Defendants’ use of the RICELAND Marks began on or around March 2020
`50.
`well after Plaintiff’s RICELAND Marks became famous. Upon information and belief, the
`Defendants’ are passing off non-genuine product as Plaintiff’s, and distributing Counterfeit Rice
`to Washington State and other retailers and grocers in the Northwest region.
`The Defendants’ use of the RICELAND Marks dilutes the distinctive value of
`51.
`Plaintiff’s RICELAND Marks by lessening the capacity of Plaintiff to identify and distinguish
`its goods and services from those of others.
`The Defendants’ unknown health and food safety measures during production and
`52.
`distribution of a sought-after food product at the height of a global pandemic endangers public
`health.
`The Defendants’ precarious use of the RICELAND Marks at the height of a global
`53.
`pandemic also puts Plaintiff’s brand and goodwill in danger.
`The Defendants’ deliberate and willful violation of Plaintiff’s rights in the
`54.
`RICELAND Marks have caused and will continue to cause damages to Plaintiff, as well as to
`the reputation associated with Plaintiff’s RICELAND Marks.
`Plaintiff has no adequate remedy at law. Plaintiff has suffered, and continues to
`55.
`suffer, irreparable harm such that Plaintiff is entitled to injunctive relief.
`Accordingly, the Defendants’ conduct constitutes dilution pursuant to 15 U.S.C.
`56.
`§ 1125.
`
`
`
`COMPLAINT - 11
`
`
`133302.0001/8131640.1
`
`LANE POWELL PC
`1420 FIFTH AVENUE, SUITE 4200
`P.O. BOX 91302
`SEATTLE, WA 98111-9402
`206.223.7000 FAX: 206.223.7107
`
`

`

`
`
`Case 2:20-cv-01170 Document 1 Filed 07/31/20 Page 12 of 15
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`
`FOURTH CLAIM FOR RELIEF AGAINST ALL DEFENDANTS
`UNFAIR COMPETITION IN VIOLATION OF WASHINGTON COMMON LAW
`Plaintiff hereby refers to paragraphs 1 through 56, inclusive, of this Complaint
`57.
`and by this reference incorporates the same as though fully set forth herein.
`The RICELAND Marks are wholly associated with Plaintiff due to its long use
`58.
`thereof, and as such, Plaintiff is deserving of having its mark adequately protected with respect
`to the conduct of its business.
`The Defendants’ use of the RICELAND Marks comprise unfair competition in
`59.
`that customers and would-be customers are likely to be confused concerning the origin of
`products using the same or similar marks in the marketplace.
`The Defendants’ aforesaid acts are in violation of federal and state law,
`60.
`specifically RCW 19.86.020.
`Plaintiff has no remedy at law. Plaintiff has suffered, and will continue to suffer
`61.
`irreparable harm such that Plaintiff is entitled to injunctive relief.
`Additionally, the Defendants have profited from their wrongful acts and must
`62.
`disgorge their ill-gotten gains.
`FIFTH CLAIM FOR RELIEF AGAINST ALL DEFENDANTS
`TRADEMARK INFRINGEMENT IN VIOLATION OF WASHINGTON STATE LAW
`Plaintiff hereby refers to paragraphs 1 through 62, inclusive, of this Complaint
`63.
`and by this reference incorporates the same as though fully set forth herein.
`The Defendants are, without consent or authorization, intentionally and
`64.
`knowingly using, reproducing, manufacturing, marketing, displaying and/or distributing, in
`interstate commerce, Counterfeit Rice bearing Plaintiff’s RICELAND Marks.
`The Defendants are, without consent and in bad faith, using and reproducing in
`65.
`interstate commerce Plaintiff’s RICELAND Marks to bolster the sales of their infringing
`Counterfeit Rice, thereby misappropriating the goodwill associated with the Plaintiff’s brand.
`The Defendants’ conduct has caused and continues to cause, damage and injury
`66.
`to Plaintiff's brand, goodwill and reputation.
`
`COMPLAINT - 12
`
`
`133302.0001/8131640.1
`
`LANE POWELL PC
`1420 FIFTH AVENUE, SUITE 4200
`P.O. BOX 91302
`SEATTLE, WA 98111-9402
`206.223.7000 FAX: 206.223.7107
`
`

`

`
`
`Case 2:20-cv-01170 Document 1 Filed 07/31/20 Page 13 of 15
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`
`In manufacturing, marketing, offering to sell, and selling Counterfeit Rice, the
`67.
`Defendants’ copy, reproduce, and in some instances, remove, Plaintiff’s trademark and
`copyright notices.
`The Defendants’ aforesaid acts are in violation of federal and state law,
`68.
`specifically RCW 19.77.140.
`SIXTH CLAIM FOR RELIEF AGAINST ALL DEFENDANTS
`DILUTION IN VIOLATION OF WASHINGTON STATE LAW
`Plaintiff hereby refers to paragraphs 1 through 68, inclusive, of this Complaint
`69.
`and by this reference incorporates the same as though fully set forth herein.
`The Defendants’ use of the RICELAND Marks began on or around March 2020
`70.
`well after Plaintiff’s RICELAND Marks became famous. Upon information and belief, the
`Defendants are passing off non-genuine product as Riceland’s Rice, and selling potentially
`hazardous Counterfeit Rice, to Washington retailers for distribution among the general public.
`The Defendants’ use of the RICELAND Marks dilutes the distinctive value of
`71.
`Plaintiff’s RICELAND Marks by lessening the capacity of Plaintiff to identify and distinguish
`its goods and services from those of others. The Defendants’ precarious use of the RICELAND
`Marks at the height of a global pandemic also puts Plaintiff’s brand and goodwill in danger.
`The Defendants’ deliberate and willful violation of Plaintiff’s rights in the
`72.
`RICELAND Marks have caused and will continue to cause damages to Plaintiff, as well as to
`the reputation associated with Plaintiff’s RICELAND Marks.
`By their acts alleged herein, the Defendants are causing dilution of the distinctive
`73.
`quality of Plaintiff’s RICELAND Marks and injury to Plaintiff’s business reputation in violation
`of RCW 19.77.160.
`SEVENTH CLAIM FOR RELIEF AGAINST ALL DEFENDANTS
`UNJUST ENRICHMENT
`
`Plaintiff hereby refers to paragraphs 1 through 73, inclusive, of this Complaint
`74.
`and by this reference incorporates the same as though fully set forth herein.
`
`COMPLAINT - 13
`
`
`133302.0001/8131640.1
`
`LANE POWELL PC
`1420 FIFTH AVENUE, SUITE 4200
`P.O. BOX 91302
`SEATTLE, WA 98111-9402
`206.223.7000 FAX: 206.223.7107
`
`

`

`
`
`
`
`Case 2:20-cv-01170 Document 1 Filed 07/31/20 Page 14 of 15
`
`Since at least as early as March 2020, the Defendants have been selling
`75.
`Counterfeit Rice without authorization using a false designation—the Plaintiff’s RICELAND
`Marks.
`As a result of the Defendants’ aforementioned unlawful acts, the Defendants have
`76.
`had a financial benefit conferred upon them and are thereby unjustly enriched. It is inequitable
`for the Defendants to retain those benefits and they should be disgorged of any profits.
`PRAYER FOR RELIEF
`WHEREFORE, Plaintiff prays for the following relief:
`a. Awarding Plaintiff recovery of up to three times the Defendants’ profits and damages
`for the Defendants’ use of the RICELAND Marks in connection with the sale of
`Counterfeit Rice pursuant to 15 U.S.C. § 1117;
`b. Awarding Plaintiff statutory damages as allowed by law;
`c. Awarding prejudgment and post judgment interest at the maximum rate allowed by
`law;
`d. Directing an accounting of all Counterfeit Rice that was or is within the Defendants’
`possession, custody, or control;
`e. Directing an Order pursuant to 15 U.S.C. § 1116 providing for the seizure,
`impoundment, and destruction of all Counterfeit Rice within the Defendants’ custody,
`possession, or control;
`f. Enjoining the Defendants from further use of the RICELAND Marks;
`g. Awarding Plaintiff restitution from the Defendants for unjust enrichment;
`h. Awarding Plaintiff its costs and attorney fees incurred in this action; and
`i. Granting such other and further relief as this Court may deem just and equitable, or
`to which Plaintiff may be entitled.
`
`//
`//
`//
`COMPLAINT - 14
`
`
`133302.0001/8131640.1
`
`LANE POWELL PC
`1420 FIFTH AVENUE, SUITE 4200
`P.O. BOX 91302
`SEATTLE, WA 98111-9402
`206.223.7000 FAX: 206.223.7107
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`
`

`

`
`
`Case 2:20-cv-01170 Document 1 Filed 07/31/20 Page 15 of 15
`
`JURY DEMAND
`Plaintiff demands a trial by jury of all issues so triable pursuant to Rule 38 of the Federal
`Rules of Civil Procedure.
`DATED: July 31, 2020
`
`___
`
`
`
`
`
`
`
`LANE POWELL PC
`
`By s/Barbara J. Duffy
`Barbara J. Duffy, WSBA No. 18885
`
`s/Aaron Schaer
`
`
`
`Aaron Schaer, WSBA No. 52122
`1420 Fifth Avenue, Suite 4200
`P.O. Box 91302
`Seattle, WA 98111-9402
`Telephone: 206.223.7000
`Facsimile: 206.223.7107
`Email: duffyb@lanepowell.com
`Email: schaera@lanepowell.com
`
`
`DENTONS US LLP
`
`By s/Samuel Fifer
`Samuel Fifer, pro hac vice pending
`
` s/Taaj M. Reaves
`Taaj M. Reaves, pro hac vice pending
`233 South Wacker Drive, Suite 5900
`Chicago, Illinois 60606
`Telephone (312) 876-8000
`Facsimile (312) 876-7934
`samuel.fifer@dentons.com
`taaj.reaves@dentons.com
`
`Attorneys for Plaintiff
`Riceland Foods, Inc.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`COMPLAINT - 15
`
`
`133302.0001/8131640.1
`
`LANE POWELL PC
`1420 FIFTH AVENUE, SUITE 4200
`P.O. BOX 91302
`SEATTLE, WA 98111-9402
`206.223.7000 FAX: 206.223.7107
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`
`

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket