Case 3:13-cv-00762-PK

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UNITED STATES DISTRICT COURT DISTRICT OF OREGON PORTLAND DIVISION TECHNIVORM, B.V., a Netherlands corporation, Plaintiff, v. BOYD COFFEE COMPANY, an Oregon corporation, Defendant.

Case No. 3:13-cv-00762-PK

FIRST AMENDED COMPLAINT This is an action for breach of contract, indemnification, trademark and trade name infringement, unfair competition and declaratory relief arising from defendants wrongful acts in failing to pay for products ordered and received by it, failing to pay for warranty repairs and service it committed to, improperly representing itself as the distributor of Technivorm B.V.s (Technivorm) products in the United States and incorrectly asserting that it was Technivorms exclusive United States distributor. Defendants relationship with Technivorm has been properly terminated, and Technivorm seeks monetary, injunctive, and other relief for the reasons set forth below. THE PARTIES 1. Plaintiff Technivorm B.V. is a Netherlands limited liability company with

its principal place of business at Industrieweg 20 3958 VR Amerongen, The Netherlands. 2. Technivorm is engaged in the business of manufacturing high quality and

handmade Moccamaster coffee makers for home and commercial use around the world,

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including the United States. Technivorm authorizes independent distributors to sell its Moccamaster coffee makers to retailers and directly to end users. 3. Defendant is an Oregon corporation headquartered at 19730 NE Sandy

Blvd., Portland, Oregon 97230. JURISDICTION AND VENUE 4. This Court has jurisdiction pursuant to 34(a) and 39 of the Lanham Act,

15 U.S.C. 1116 (a) & 1121, and 28 U.S.C. 1331, 1332(a), 1338, 1367(a) and 2201. The amount in controversy exceeds $75,000, exclusive of interest and costs. 5. This Court has in personam jurisdiction over defendant because it

conducts business in this district and events giving rise to Plaintiffs claims have occurred in this district. 6. Venue is proper in this district pursuant to 28 U.S.C. 1391(b)(1), (2). BACKGROUND FACTS 7. Technivorm is a manufacturer of Moccamaster coffee makers and owns a This

federal registration for the mark Moccamaster, Registration No. 2,549,956.

registration is in full force and effect and is incontestable pursuant to 15 U.S.C. 1065. 8. Technivorm also owns a federal registration for the mark technivorm, This registration is in full force and effect and is

Registration No. 1,456,171.

incontestable pursuant to 15 U.S.C. 1065. 9. Technivorm has the exclusive authority to use and authorize others to use

its Moccamaster and technivorm marks and trade names and has used them at all times relevant to this action to identify its Moccamaster coffee makers.

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10. commerce. 11.

The Moccamaster and technivorm trademarks are utilized in interstate

Defendant was formerly authorized to use the Moccamaster and

technivorm trademarks and trade names as an authorized distributor of Moccamaster and technivorm coffee makers. 12. Pursuant to Technivorms authorization, defendant ordered Moccamaster

and technivorm coffee makers from Technivorm, marketed and sold those coffee makers and agreed to pay Technivorm for the coffee makers defendant ordered and received from Technivorm. 13. Defendant regularly ignored and failed to comply with the terms of

payment and the credit limit applicable to it when it ordered and received Moccamaster coffee makers from Technivorm. 14. Defendant also failed to prepare and present to Technivorm, as agreed, a

business and marketing plan to improve its performance and the sale of Moccamaster coffee makers. 15. Rather than promote Technivorms Moccamaster coffee makers,

defendant focused primarily on marketing and selling other products when participating in trade shows. 16. Defendant was advised on October 1, 2012 that its relationship as a

distributor of Technivorms Moccamaster coffee makers would end as of December 31, 2012.

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17.

On December 31, 2012, Technivorm terminated its relationship with

defendant that had previously authorized defendant to use Technivorms Moccamaster and technivorm trademarks and trade names as a distributor. 18. Technivorm advised defendant that it could still purchase parts,

accessories and Moccamaster coffee makers from a new distributor that Technivorm engaged in the United States as of January 1, 2013. 19. There is simply no limitation imposed by Technivorm on defendants

ability to then sell parts, accessories and Moccamaster coffee makers to others, but defendant is not Technivorms United States distributor and is not allowed to hold itself out as Technivorms United States distributor. 20. However, defendant continued to market itself as the United States

importer and distributor of Technivorms Moccamaster coffee makers on the internet at http://www.boyds.com/to-buy/technivorm/ and at http//www.boydscoffeestore.com/brewing/. 21. In addition, defendant hijacked Technivorms own corporate name and

held itself out as the United States Moccamaster coffee maker distributor at http://www.technivorm-us.com/. 22. Defendant argued in letters to Technivorm that it remained and was the

exclusive distributor of Technivorms Moccamaster in the United States and threatened Technivorm with a lawsuit. 23. Technivorm responded in writing that defendant is no longer a distributor

of Technivorms Moccamaster.

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24.

Defendant then refused to honor the warranty on Moccamaster coffee

makers that it had independently offered to those who purchased Moccamaster coffee makers from it. 25. Defendants actions have caused and continue to cause monetary damage

and irreparable harm to Technivorm, including confusion in the marketplace and harm to its reputation and goodwill. 26. Only after the filing of this lawsuit and causing the damage it did to

Technivorm did defendant change and revise its internet web sites in a tacit admission that what was there previously was improper and violated the law and Technivorms intellectual property rights. 27. Defendant then sought out a replacement for Technivorm and marketed

that replacements competing coffee maker at the International Home and Housewares Show in Chicago, Illinois on or about March 4, 2013. COUNT I Breach of Contract 28. reference. 29. Defendant ordered Moccamaster coffee makers and parts and accessories The allegations of paragraphs 1 through 27 are hereby incorporated by

for Moccamaster coffee makers from Technivorm. 30. Technivorm manufactured and delivered to defendant the Moccamaster

coffee makers, parts and accessories that defendant ordered before their relationship was terminated pursuant to terms and conditions on invoices that accompanied or followed the delivery of the coffee makers, parts and accessories.

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31.

Defendant agreed to pay Technivorm for the Moccamaster coffee makers,

parts and accessories that defendant ordered and received. 32. Defendant failed to pay Technivorm for the Moccamaster coffee makers,

parts and accessories that defendants ordered and received. 33. Only after the filing of this lawsuit did Defendant make a late payment of

a portion of what it owes Technivorm. 34. As a direct and proximate result of these actions, Technivorm has incurred

monetary damages in the form of interest on the unpaid debt and costs of collection that continue to accrue in an amount to be established at trial. COUNT II Trademark Infringement 35. reference. 36. The use in commerce of Technivorms Moccamaster and technivorm The allegations of paragraphs 1 through 34 are hereby incorporated by

trademarks and trade names by defendant without the authorization and consent of Technivorm is likely to have confused or deceived the public into believing, contrary to fact, that the unauthorized activities of defendant were licensed, franchised, sponsored, authorized, or otherwise approved by Technivorm. Such unauthorized use of

Technivorms trademarks and trade names infringes its exclusive rights in its trademarks under Section 32 of the Lanham Act, 15 U.S.C. 1114, and applicable state law. 37. The acts of defendant were done knowingly and intentionally to cause

confusion, or to cause mistake, or to deceive.

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38.

As a direct and proximate result of defendants actions, Technivorm has

suffered and is continuing to suffer irreparable injury, and has incurred and is continuing to incur monetary damages in an amount that has yet to be determined. COUNT III Unfair Competition 39. reference. 40. The use in commerce of Technivorms Moccamaster and technivorm The allegations of paragraphs 1 through 38 are hereby incorporated by

trademarks and trade names by defendant without the authorization and consent of Technivorm is likely to have caused confusion, or to have caused mistake, or to have deceived as to the origin, sponsorship, or approval of their goods, services, or commercial activities. Such unauthorized use of Technivorms trademarks and trade names violates Section 43 of the Lanham Act, 15 U.S.C. 1125(a), and applicable state law. 41. The acts of defendant were and are being done knowingly and

intentionally to cause confusion, or to cause mistake, or to deceive. 42. As a direct and proximate result of defendants actions, Technivorm has

suffered and is continuing to suffer irreparable injury, and has incurred and is continuing to incur monetary damages in an amount that has yet to be determined. COUNT IV INDEMNIFICATION 43. reference. 44. Defendant independently and on its own initiative offered to those who The allegations of paragraphs 1 through 42 are hereby incorporated by

purchased Technivorm Moccamaster coffee makers from it a five year limited warranty.

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45.

Defendant has failed to honor its warranty in response to requests by

purchasers for warranty service. 46. Defendants failure to honor its warranty had the potential effect of

tarnishing Technivorms reputation in the market. 47. Defendant owed those who purchased Technivorm Moccamaster coffee

makers from defendant an obligation to provide and cover the warranty service Defendant offered. 48. Technivorm discharged defendants legal obligation to those who

purchased Technivorm Moccamaster coffee makers from defendant by covering warranty claims by those who requested warranty coverage from defendant, which defendant refused. 49. The obligation to cover the costs associated with defendants warranty

rests primarily with defendant and should be covered by defendant. 50. Technivorm incurred damages in the form of the costs it incurred on

defendants behalf to cover the cost of warranty parts provided by it to those who purchased Moccamaster coffee makers from defendant and made warranty claims to defendant that defendant refused to cover. PRAYER FOR RELIEF WHEREFORE, Technivorm requests that the Court: A. Enter an order enjoining defendant, and all those acting by, through, or in

concert with it, by preliminary and permanent injunction, from using Technivorms Moccamaster and technivorm trademarks and trade names, and from otherwise engaging in unfair competition with Technivorm;

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B.

Enter judgment in favor of Technivorm against defendant for damages

incurred by Technivorm in the amount that defendant has wrongfully failed to pay but that is properly owed to Technivorm and that Technivorm has incurred to cover warranty costs that are a primary obligation of defendant; C. Enter judgment in favor of Technivorm against defendant for the damages

Technivorm has sustained and the profits defendant has derived as a result of its trademark infringement and unfair competition, assessing such damages in a separate accounting procedure, and then trebling those damages in accordance with Section 35 of the Lanham Act, 15 U.S.C. 1117; D. Award Technivorm its costs and attorneys fees incurred in connection

with this action, pursuant to Section 35 of the Lanham Act, 15 U.S.C. 1117, including the costs incurred in conducting any and all necessary inspections; and E. proper. s/Todd A. Holleman Todd A. Holleman (P57699)
admitted pro hac vice

Award Technivorm such other relief as this Court may deem just and

Miller, Canfield, Paddock and Stone, PLC Attorneys for Plaintiff 225 West Washington, Suite 2600 Chicago, Illinois 60606 Telephone: (312) 460-4200 Facsimile: (312) 460-4201 holleman@millercanfield.com DATED: May 10, 2013

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CERTIFICATE OF SERVICE I hereby certify that on May 10, 2013, I electronically filed the foregoing document with the Clerk of the Court using the ECF system which will send notification of such filing to all attorneys of record.

s/Todd A. Holleman Todd A. Holleman (P57699) Miller, Canfield, Paddock and Stone, PLC 225 West Washington, Suite 2600 Chicago, Illinois 60606 Telephone: (312) 460-4200 Facsimile: (312) 460-4201 holleman@millercanfield.com

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