Case 2:23-cv-00102-LK Document 12 Filed 03/27/23 Page 1 of 17
`
`
`
`HON. LAUREN KING
`
`
`
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF WASHINGTON
`AT SEATTLE
`
`
`
`HUMANGEAR, INC.,
`a California Corporation,
`
`
`Plaintiff,
`
`v.
`
`
`
`
`INDUSTRIAL REVOLUTION, INC.,
`a Washington Corporation,
`
`
`Defendant
`
`
`
`
`
`
`
`Case No.: 2:23-cv-00102-LK
`
`INDUSTRIAL REVOLUTION, INC.’S
`ANSWER, AFFIRMATIVE DEFENSES,
`AND COUNTERCLAIM
`
`JURY TRIAL DEMANDED
`
`Defendant Industrial Revolution, Inc. (“IR”), by and through its undersigned attorneys,
`
`answer the Complaint of Plaintiff Humangear, Inc.(“Humangear”) as follows:
`
`ANSWER
`
`THE PARTIES
`
`1.
`
`IR lacks knowledge or information sufficient to form a belief as to the truth of the
`
`allegations contained in paragraph 1 of the Complaint.
`
`2.
`
`IR admits it is a Washington corporation, having a regular and established place
`
`of business in King County, Washington.
`
`JURISDICTION AND VENUE
`
`3.
`
`Admit.
`
`INDUSTRIAL REVOLUTION, INC.’S ANSWER
`AFFIRMATIVE DEFENSES, AND
`COUNTERCLAIM
`2:23-cv-00102
`
`1
`
`SEED INTELLECTUAL PROPERTY LAW GROUP LLP
`701 FIFTH AVENUE, SUITE 5400
`SEATTLE, WASHINGTON 98104-7092
`(206) 622-4900
`
`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 2:23-cv-00102-LK Document 12 Filed 03/27/23 Page 2 of 17
`
`
`
`4.
`
`IR admits that the Court has personal jurisdiction over it and that certain actions
`
`alleged to be infringing acts occurred within Washington and within this District. IR denies the
`
`remaining allegations of paragraph 4 of the Complaint.
`
`5.
`
`IR admits that venue is proper in this District, that it is incorporated in
`
`Washington, and that its principal place of business is in Washington. IR denies the remaining
`
`allegations of paragraph 5 of the Complaint.
`
`THE PATENTS IN SUIT
`
`6.
`
`IR admits that a copy of U.S. Patent No. 10,555,629, including Certificate of
`
`Correction, is attached to the Complaint as Exhibit A, and that the documents in Exhibit A speak
`
`for themselves. Defendant lacks knowledge or information sufficient to form a belief as to the
`
`truth of the remaining allegations of paragraph 6 of the Complaint.
`
`7.
`
`IR admits that a copy of U.S. Patent No. 11,503,933, is attached to the Complaint
`
`as Exhibit B, and that the document in Exhibit B speaks for itself. Defendant lacks knowledge or
`
`information sufficient to form a belief as to the truth of the remaining allegations of paragraph 7
`
`of the Complaint.
`
`8.
`
`IR admits that a copy of U.S. Patent No. 11,540,654, is attached to the Complaint
`
`as Exhibit C, and that the document in Exhibit C speaks for itself. Defendant lacks knowledge or
`
`information sufficient to form a belief as to the truth of the remaining allegations of paragraph 8
`
`of the Complaint.
`
`9.
`
`IR lacks information sufficient to form a belief as to the truth of the allegations of
`
`paragraph 9 of the Complaint.
`
`THE TRADEMARK IN SUIT
`
`10.
`
`IR lacks information sufficient to form a belief as to the truth of the allegations of
`
`paragraph 10 of the Complaint.
`
`INDUSTRIAL REVOLUTION, INC.’S ANSWER
`AFFIRMATIVE DEFENSES, AND
`COUNTERCLAIM
`2:23-cv-00102
`
`2
`
`SEED INTELLECTUAL PROPERTY LAW GROUP LLP
`701 FIFTH AVENUE, SUITE 5400
`SEATTLE, WASHINGTON 98104-7092
`(206) 622-4900
`
`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 2:23-cv-00102-LK Document 12 Filed 03/27/23 Page 3 of 17
`
`
`
`11.
`
`IR lacks information sufficient to form a belief as to the truth of the allegations of
`
`paragraph 11 of the Complaint.
`
`12.
`
`IR lacks information sufficient to form a belief as to the truth of the allegations in
`
`the first two sentences of paragraph 12 of the Complaint. IR denies the allegations in the third
`
`sentence of paragraph 12.
`
`COUNT I
`
`INFRINGEMENT OF THE ’629 PATENT
`
`13.
`
`IR restates and re-allege its responses to paragraphs 1 through 12 in this Answer
`
`as though fully set forth herein.
`
`14.
`
`15.
`
`16.
`
`Deny.
`
`Deny.
`
`IR admits that on or about March 15, 2022, Humangear’s counsel sent a letter to
`
`IR’s counsel alleging without reasonable basis that IR was infringing the ’629 Patent. Except as
`
`admitted, IR denies the allegations contained in paragraph 16 of the Complaint.
`
`17.
`
`IR admits that the Accused Products are eating utensils for camping. IR denies the
`
`remaining allegations of paragraph 17 of the Complaint.
`
`18.
`
`19.
`
`20.
`
`Deny.
`
`Deny.
`
`Deny.
`
`COUNT II
`
`INFRINGEMENT OF THE ’933 PATENT
`
`21.
`
`IR restates and re-alleges its responses to paragraphs 1 through 12 as though fully
`
`set forth herein.
`
`22.
`
`23.
`
`Deny.
`
`Deny.
`
`INDUSTRIAL REVOLUTION, INC.’S ANSWER
`AFFIRMATIVE DEFENSES, AND
`COUNTERCLAIM
`2:23-cv-00102
`
`3
`
`SEED INTELLECTUAL PROPERTY LAW GROUP LLP
`701 FIFTH AVENUE, SUITE 5400
`SEATTLE, WASHINGTON 98104-7092
`(206) 622-4900
`
`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 2:23-cv-00102-LK Document 12 Filed 03/27/23 Page 4 of 17
`
`
`
`24.
`
`IR admits that the Accused Products are eating utensils for camping. IR denies the
`
`remaining allegations of paragraph 24.
`
`25.
`
`26.
`
`27.
`
`28.
`
`Deny.
`
`Deny.
`
`Deny.
`
`Deny.
`
`COUNT III
`
`INFRINGEMENT OF THE ’654 PATENT
`
`29.
`
`IR restates and re-alleges its responses to paragraphs 1 through 12 as though fully
`
`set forth herein.
`
`30.
`
`31.
`
`32.
`
`Deny.
`
`Deny.
`
`IR admits that the Accused Products are eating utensils for camping. IR denies the
`
`remaining allegations of paragraph 32 of the Complaint.
`
`33.
`
`34.
`
`35.
`
`Deny.
`
`Deny.
`
`Deny
`
`COUNT IV
`
`INFRINGEMENT OF TRADEMARK
`
`36.
`
`IR restates and re-alleges its responses to paragraphs 1 through 12 as though fully
`
`set forth herein.
`
`37.
`
`IR admits that it began use of the mark UCO in connection with camping products
`
`at least as early as 1981 and that it added eating utensils for camping to its UCO line of camping
`
`products at least as early as 2019. IR denies the remaining allegations of paragraph 37 of the
`
`Complaint.
`
`INDUSTRIAL REVOLUTION, INC.’S ANSWER
`AFFIRMATIVE DEFENSES, AND
`COUNTERCLAIM
`2:23-cv-00102
`
`4
`
`SEED INTELLECTUAL PROPERTY LAW GROUP LLP
`701 FIFTH AVENUE, SUITE 5400
`SEATTLE, WASHINGTON 98104-7092
`(206) 622-4900
`
`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 2:23-cv-00102-LK Document 12 Filed 03/27/23 Page 5 of 17
`
`
`
`38.
`
`39.
`
`40.
`
`41.
`
`Deny.
`
`Deny.
`
`Deny.
`
`Deny.
`
`COUNT V
`
`CANCELLATION OF TRADEMARK REGISTRATION
`
`42.
`
`IR restates and re-alleges its responses to paragraphs 1 through 12 and 37 through
`
`41 as though fully set forth herein.
`
`43.
`
`IR admits that on July 9, 2020, it filed an application to register the trademark
`
`UCO for a variety of goods related to goods for which the UCO mark was already registered,
`
`that the description of goods contained in this application speaks for itself, and that this
`
`application was registered on February 16, 2021 (U.S. Reg. No. 6270921) (the “’921
`
`Registration”). IR further admits that the ’921 Registration cites its earlier registration for the
`
`UCO mark for closely related goods (U.S. Reg. No. 4166672) (the “’672 Registration”), which
`
`registered on July 12, 2012 based on an application with a May 6, 2011 filing date giving IR
`
`priority over Humangear’s UNO mark. IR denies the remaining allegations contained in
`
`paragraph 43 of the Complaint.
`
`44.
`
`45.
`
`Deny.
`
`This paragraph states legal conclusions to which no response is required. To the
`
`extent a response is required, IR admits that the Court has jurisdiction under the Lanham Act to
`
`order the U.S. Patent & Trademark Office to cancel a trademark registration if the legal
`
`requirements for doing so are satisfied. IR denies the remaining allegations of paragraph 45 of
`
`the Complaint.
`
`INDUSTRIAL REVOLUTION, INC.’S ANSWER
`AFFIRMATIVE DEFENSES, AND
`COUNTERCLAIM
`2:23-cv-00102
`
`5
`
`SEED INTELLECTUAL PROPERTY LAW GROUP LLP
`701 FIFTH AVENUE, SUITE 5400
`SEATTLE, WASHINGTON 98104-7092
`(206) 622-4900
`
`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 2:23-cv-00102-LK Document 12 Filed 03/27/23 Page 6 of 17
`
`
`
`REQUESTED RELIEF
`
`Defendant denies that Plaintiff is entitled to any relief whatsoever from Defendant or this
`
`Court, as requested in the Complaint or otherwise.
`
`Defendant demands a trial by jury of all issues so triable.
`
`JURY DEMAND
`
`
`
`* * *
`
`AFFIRMATIVE DEFENSES
`
`Without waiving any non-affirmative defenses that are not stated herein, and without
`
`assuming the burden of proof of any defense where the law provides otherwise, Defendant IR
`
`submits its affirmative and other defenses to the claims set forth in the Complaint as follows:
`
`FIRST AFFIRMATIVE DEFENSE:
`
`FAILURE TO STATE A CLAIM
`
`Plaintiff’s Complaint, on one or more claims alleged, fails to state a claim upon which
`
`relief may be granted.
`
`SECOND AFFIRMATIVE DEFENSE:
`
`INVALIDITY OF U.S. PATENT NO. 10,555,629
`
`The ’629 Patent is invalid and/or unenforceable for failure to comply with one or more of
`
`the requirements of U.S. Code, Title 35, including without limitation, 35 U.S.C. §§ 101, 102,
`
`103, and 112, the non-statutory doctrine of double patenting, and the rules, regulations, and laws
`
`pertaining thereto.
`
`THIRD AFFIRMATIVE DEFENSE:
`
`INVALIDITY OF U.S. PATENT NO. 11,503,933
`
`The ’933 Patent is invalid and/or unenforceable for failure to comply with one or more of
`
`the requirements of U.S. Code, Title 35, including without limitation, 35 U.S.C. §§ 101, 102,
`
`INDUSTRIAL REVOLUTION, INC.’S ANSWER
`AFFIRMATIVE DEFENSES, AND
`COUNTERCLAIM
`2:23-cv-00102
`
`6
`
`SEED INTELLECTUAL PROPERTY LAW GROUP LLP
`701 FIFTH AVENUE, SUITE 5400
`SEATTLE, WASHINGTON 98104-7092
`(206) 622-4900
`
`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 2:23-cv-00102-LK Document 12 Filed 03/27/23 Page 7 of 17
`
`
`
`103, and 112, the non-statutory doctrine of double patenting, and the rules, regulations, and laws
`
`pertaining thereto.
`
`FOURTH AFFIRMATIVE DEFENSE:
`
`INVALIDITY OF U.S. PATENT NO. 11,540,654
`
`The ’654 Patent is invalid and/or unenforceable for failure to comply with one or more of
`
`the requirements of U.S. Code, Title 35, including without limitation, 35 U.S.C. §§ 101, 102,
`
`103, and 112, the non-statutory doctrine of double patenting, and the rules, regulations, and laws
`
`pertaining thereto.
`
`FIFTH AFFIRMATIVE DEFENSE:
`
`PROSECUTION HISTORY ESTOPPEL AND DISCLAIMER
`
`Plaintiff’s claims are barred in whole or in part based on prosecution history estoppel,
`
`equitable estoppel, and/or prosecution history disclaimer. By reason of the proceedings in the
`
`U.S. Patent and Trademark Office during the prosecution of the applications that resulted in the
`
`issuance of the ’629 Patent, the ’933 Patent, and the ’654 Patent, Plaintiff is estopped from
`
`claiming construction of one or more claims of these patents that would cause any valid claim
`
`thereof to cover or include any product manufactured, used, sold, offered for sale, or imported by
`
`IR.
`
`SIXTH AFFIRMATIVE DEFENSE:
`
`LIMITATIONS ON DAMAGES
`
`Any claim by Plaintiff for damages is limited under 35 U.S.C. § 286 or § 287 to the
`
`extent Plaintiff failed to provide adequate notice to IR of alleged infringement, and thus is barred
`
`from recovering damages prior to the date that adequate notice was provided.
`
`SEVENTH AFFIRMATIVE DEFENSE:
`
`EQUITABLE DEFENSES
`
`Plaintiff’s claims are barred in whole or in party under principles of equity including
`
`laches, prosecution laches, waiver, implied waiver, acquiescence, estoppel, and/or unclean
`
`hands.
`
`INDUSTRIAL REVOLUTION, INC.’S ANSWER
`AFFIRMATIVE DEFENSES, AND
`COUNTERCLAIM
`2:23-cv-00102
`
`7
`
`SEED INTELLECTUAL PROPERTY LAW GROUP LLP
`701 FIFTH AVENUE, SUITE 5400
`SEATTLE, WASHINGTON 98104-7092
`(206) 622-4900
`
`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 2:23-cv-00102-LK Document 12 Filed 03/27/23 Page 8 of 17
`
`
`
`EIGHTH AFFIRMATIVE DEFENSE:
`
`INVALID TRADEMARK
`
`Plaintiff’s claims for trademark infringement and cancellation of Defendant’s U.S.
`
`Registration No. 1,579,405 for UCO are barred in whole or in part because Plaintiff has no valid,
`
`protectable marks or registrations that give Plaintiff any rights that may be asserted against IR.
`
`NINTH AFFIRMATIVE DEFENSE:
`
`LACK OF OWNERSHIP
`
`Plaintiff’s claims for trademark infringement and cancellation of Defendant’s U.S.
`
`Registration No. 1,579,405 for UCO are barred in whole or in part because Defendant has
`
`priority over Plaintiff in its UCO mark both as a result of its U.S. Registration No. 4,166,672 for
`
`UCO and its common law use of the UCO mark since at least as early as 1981.
`
`RESERVATION OF ADDITIONAL AFFIRMATIVE DEFENSES
`
`Defendant is continuing to investigate Plaintiffs’ claims, and discovery in this matter is
`
`ongoing. Defendant, therefore, reserves the right to amend or add to its defenses after a
`
`reasonable opportunity for appropriate discovery.
`
`For its counterclaim against Humangear, IR, Inc., states as follows:
`
`COUNTERCLAIM
`
`NATURE OF THE CASE
`
`1.
`
`This is an action by IR pursuant to Rule 13 of the Federal Rules of Civil
`
`Procedure for trademark infringement and cancellation of Humangear’s registration for the
`
`UNO Mark.
`
`2.
`
`As stated in its answer to Humangear’s Complaint, IR denies that there is a
`
`likelihood of confusion caused by its use of its UCO Mark in connection with camping products
`
`and accessories, including eating utensils, and Humangear’s use of its UNO Mark in connection
`
`with eating utensils (the “Parties’ Uses”).
`
`INDUSTRIAL REVOLUTION, INC.’S ANSWER
`AFFIRMATIVE DEFENSES, AND
`COUNTERCLAIM
`2:23-cv-00102
`
`8
`
`SEED INTELLECTUAL PROPERTY LAW GROUP LLP
`701 FIFTH AVENUE, SUITE 5400
`SEATTLE, WASHINGTON 98104-7092
`(206) 622-4900
`
`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 2:23-cv-00102-LK Document 12 Filed 03/27/23 Page 9 of 17
`
`
`
`3.
`
`However, if it is ultimately determined that there is a likelihood of confusion
`
`between the Parties’ Uses, IR is the senior user and has priority over Humangear under the
`
`common law and by virtue of IR’s U.S. registration for UCO (U.S. Reg. No. 1,579,405). As
`
`such, in this event, Humangear would be the infringer and its registration for UNO should be
`
`cancelled.
`
`4.
`
`IR is a Washington corporation, with its principal place of business at 5835
`
`Segale Park Drive C, Tukwila, Washington, 98188-4739.
`
`5.
`
`On information and belief, Plaintiff is a California corporation, incorporated in
`
`the State of California with its principal place of business in the City and County of San
`
`Francisco, California.
`
`JURISDICTION AND VENUE
`
`6.
`
`This Court has subject matter jurisdiction over this counterclaim pursuant to Rule
`
`13 of the Federal Rules of Civil Procedure, 15 U.S.C. § 1121 and 28 U.S.C. §§ 1331 and 1338,
`
`and under the principles of supplemental jurisdiction.
`
`7.
`
`This Court has personal jurisdiction over Humangear because Humangear does
`
`business in and/or has substantial regular contacts with Washington. For example, Humangear
`
`markets, distributes, and sells its products throughout the United States, including in
`
`Washington. In addition, IR’s claims against Humangear arise from Humangear’s contacts with
`
`Washington, including without limitation, the advertising, promotion, and sale of Humangear
`
`products under the UNO mark.
`
`8.
`
`Venue is proper in this district pursuant to 28 U.S.C. §§ 1391(b) and (c).
`
`FACTUAL BACKGROUND
`
`9.
`
`IR’s predecessor, UCO Corporation (“UCO”), started its manufacturing business
`
`in 1971. During the 1970s, UCO manufactured hardware fittings for backpacks, ski boot
`
`buckles, and more. In 1981, UCO launched its first retail camping product, the UCO Original
`
`INDUSTRIAL REVOLUTION, INC.’S ANSWER
`AFFIRMATIVE DEFENSES, AND
`COUNTERCLAIM
`2:23-cv-00102
`
`9
`
`SEED INTELLECTUAL PROPERTY LAW GROUP LLP
`701 FIFTH AVENUE, SUITE 5400
`SEATTLE, WASHINGTON 98104-7092
`(206) 622-4900
`
`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 2:23-cv-00102-LK Document 12 Filed 03/27/23 Page 10 of 17
`
`
`
`Candle Lantern (the “UCO Lantern”) under the UCO trademark (the “UCO Mark”). Initially,
`
`UCO sold the UCO Lantern to Early Winters who resold it under its brand. Subsequently, UCO
`
`began selling the UCO Lantern to consumers under the UCO trademark.
`
`10.
`
`Since the 1980s, UCO expanded its camping product lineup to include
`
`flashlights, headlamps, firestarters, camp stove products, portable grills, and other camping
`
`products and accessories.
`
`11.
`
`In 2005, IR became the successor to UCO. Shortly thereafter, IR became the U.S.
`
`distributor for Light My Fire (“LMF”), a Swedish outdoor gear manufacturer. From 2005
`
`through part of 2019, IR distributed LMF’s camping eating utensils, including LMF’s “Spork,”
`
`a combination spoon and fork with a small knife edge.
`
`12.
`
`Anticipating the conclusion of the LMF distribution agreement at the end of
`
`2018, IR began preparations for developing its own line of camping eating utensils in 2016. IR
`
`engaged Anvil Studios, an industrial design firm, to develop original new products to replace the
`
`LMF products. This project was a joint effort between IR’s new product development team and
`
`Anvil. IR dubbed the new line as “UCO Ware.”
`
`13.
`
`IR launched its UCO Ware line of camping eating utensils in 2019 after the LMF
`
`relationship ended. The UCO Ware line includes the UCO Utility Spork and the UCO Switch
`
`Spork. The UCO Utility Spork, shown below, includes holes to be used with the included tether
`
`to attach one or more of them to a pack or to hang them up to dry. The UCO Utility Spork also
`
`has a nesting feature, so that multiple utensils could be stacked in a neat small package.
`
`INDUSTRIAL REVOLUTION, INC.’S ANSWER
`AFFIRMATIVE DEFENSES, AND
`COUNTERCLAIM
`2:23-cv-00102
`
`10
`
`SEED INTELLECTUAL PROPERTY LAW GROUP LLP
`701 FIFTH AVENUE, SUITE 5400
`SEATTLE, WASHINGTON 98104-7092
`(206) 622-4900
`
`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 2:23-cv-00102-LK Document 12 Filed 03/27/23 Page 11 of 17
`
`
`
`
`
`14.
`
`IR’s UCO Switch Spork, shown below, is a two-piece fork and spoon/knife
`
`combo that locks together to create an extra-long utensil. Like the UCO Utility Spork, the UCO
`
`Switch Spork also includes holes to be used with the included tether:
`
`
`
`
`
`15.
`
`As a result of its continuous use of the UCO Mark over more than 40 years, IR
`
`has developed invaluable goodwill in the UCO Mark. The UCO Mark has come to be
`
`recognized by relevant consumers as a single source of high-quality camping goods and
`
`accessories.
`
`INDUSTRIAL REVOLUTION, INC.’S ANSWER
`AFFIRMATIVE DEFENSES, AND
`COUNTERCLAIM
`2:23-cv-00102
`
`11
`
`SEED INTELLECTUAL PROPERTY LAW GROUP LLP
`701 FIFTH AVENUE, SUITE 5400
`SEATTLE, WASHINGTON 98104-7092
`(206) 622-4900
`
`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 2:23-cv-00102-LK Document 12 Filed 03/27/23 Page 12 of 17
`
`
`
`16.
`
`On May 6, 2011, IR filed an application to register the UCO Mark with the U.S.
`
`Patent & Trademark Office for “candles” in Class 4, “candle lanterns; lanterns” in Class 11, and
`
`“matches; containers for matches” in Class 34 (U.S. Ser. No. 95/215,019). The USPTO granted
`
`the application and issued a registration on July 3, 2012 (U.S. Reg. No. 4,166,672). This
`
`registration is incontestable.
`
`17.
`
`On July 9, 2020, IR filed an application to register the UCO Mark with the U.S.
`
`Patent & Trademark Office for multiple other camping related products including “table cutlery;
`
`table spoons; table forks; table knives; combination utensils, namely, combined table spoon and
`
`knife, and combined table spoon and fork (spork)” in Class 8. The USPTO granted the
`
`application and issued a registration on February 16, 2021 (U.S. Reg. No. 6,270,921) (this
`
`registration and the ’672 registration referenced in the preceding paragraph shall be referenced
`
`as the “UCO Registrations”).
`
`18.
`
`In its application to register the UNO Mark in connection with “table cutlery,
`
`namely, combination spoon/forks, sporks; table cutlery, namely, sporks, combination
`
`spoon/forks for travel, camping, and personal uses,” Humangear alleged a date of first use and
`
`first use in commerce of February 10, 2015 (the “UNO Priority Date”). The USPTO issued a
`
`registration to Humangear for the UNO Mark on October 9, 2018 (U.S. Reg. No. 5,579,272)
`
`(the “UNO Registration”).
`
`19.
`
`IR does not contend that there is a likelihood of confusion between IR’s use of
`
`UCO in connection with its UCO Ware products and Humangear’s use of UNO in connection
`
`with its eating utensils. However, in the event it is determined in this action that there is a
`
`likelihood of confusion between these uses under Sections 32 or 43(a) of the Lanham Act or
`
`state law (the “Condition”), IR is the senior user as a result of its registrations for UCO and
`
`under the common law as a result of its use in commerce of the UCO mark in connection with
`
`camping products for many years prior to the UNO Priority Date. As such, subject to the
`
`Condition, Humangear is liable to IR for trademark infringement and unfair competition under
`
`INDUSTRIAL REVOLUTION, INC.’S ANSWER
`AFFIRMATIVE DEFENSES, AND
`COUNTERCLAIM
`2:23-cv-00102
`
`12
`
`SEED INTELLECTUAL PROPERTY LAW GROUP LLP
`701 FIFTH AVENUE, SUITE 5400
`SEATTLE, WASHINGTON 98104-7092
`(206) 622-4900
`
`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 2:23-cv-00102-LK Document 12 Filed 03/27/23 Page 13 of 17
`
`
`
`federal and state law and Humangear’s UNO Registration should be cancelled under Section
`
`2(d) and Section 14 of the Lanham Act.
`
`CAUSES OF ACTION
`
`FIRST CAUSE OF ACTION: FEDERAL TRADEMARK INFRINGEMENT
`
`(15 U.S.C. § 1114)
`
`20.
`
`IR repeats and re-alleges each allegation set forth in the preceding paragraphs of
`
`these counterclaims as if fully set forth herein.
`
`21.
`
`22.
`
`IR is the owner of the UCO Mark and the UCO Registrations.
`
`IR’s priority date for its use of the UCO Mark in connection with utensils for
`
`camping is many years before the UNO Priority Date as a result of IR’s continuous use of the
`
`UCO Mark in connection with camping products and as a result of IR’s incontestable
`
`registration for UCO for camping products (U.S. Reg. No. 4,166,672).
`
`23.
`
`Subject to the Condition, the actions of Humangear, as alleged above, constitute
`
`the unauthorized use in commerce of reproductions, counterfeits, copies or colorable imitations
`
`of IR’s registered UCO Mark in connection with the sale, offering for sale, distribution or
`
`advertising of goods on or in connection with such use is likely to cause consumer confusion,
`
`deception or mistake as to source, sponsorship or approval of Humangear’s goods in violation of
`
`15 U.S.C. § 1114.
`
`24.
`
`Subject to the Condition, Humangear’s actions in infringing IR’s UCO Mark
`
`have been and continue to be willful as Humangear has been on constructive notice of the UCO
`
`Registrations and on actual notice of IR’s UCO Mark since at least as early March 17, 2022,
`
`when counsel for Humangear wrote to IR concerning its UCO products.
`
`25.
`
`Subject to the Condition, Humangear’s actions in infringing IR’s UCO Mark
`
`have caused and will continue to cause IR to sustain damage, loss, and injury in an amount that
`
`cannot be fully measured or compensated in economic terms as they have damaged and will
`
`continue to damage the business, market, reputation, and goodwill of IR.
`
`INDUSTRIAL REVOLUTION, INC.’S ANSWER
`AFFIRMATIVE DEFENSES, AND
`COUNTERCLAIM
`2:23-cv-00102
`
`13
`
`SEED INTELLECTUAL PROPERTY LAW GROUP LLP
`701 FIFTH AVENUE, SUITE 5400
`SEATTLE, WASHINGTON 98104-7092
`(206) 622-4900
`
`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 2:23-cv-00102-LK Document 12 Filed 03/27/23 Page 14 of 17
`
`
`
`26.
`
`Subject to the Condition, Humangear’s actions in infringing IR’s UCO Mark will
`
`continue to cause IR to sustain irreparable damage, loss and injury, for which IR has no
`
`adequate remedy at law.
`
`SECOND CAUSE OF ACTION: FALSE DESIGNATION OF ORIGIN
`
`(15 U.S.C. § 1125(A))
`
`27.
`
`IR repeats and re-alleges each allegation set forth in the preceding paragraphs of
`
`these counterclaims as if fully set forth herein.
`
`28.
`
`Subject to the Condition, Humangear’s unauthorized use of the UNO Mark in
`
`connection with its goods is likely to cause confusion, or to cause mistake or to deceive as to the
`
`affiliation, connection, or association of Humangear with IR or as to the origin, sponsorship, or
`
`approval of Humangear’s goods by IR in violation of 15 U.S.C. § 1125(a)(1)(A).
`
`29.
`
`Subject to the Condition, Humangear’s actions in violation of Section 1125(a)
`
`have been and continue to be willful as Humangear has been on constructive notice of the UCO
`
`Registrations and on actual notice of IR’s UCO Mark since at least as early March 17, 2022,
`
`when counsel for Humangear wrote to IR concerning its UCO products.
`
`30.
`
`Subject to the Condition, Humangear’s actions in violation of Section 1125(a)
`
`have caused and will continue to cause IR to sustain damage, loss, and injury in an amount that
`
`cannot be fully measured or compensated in economic terms as they have damaged and will
`
`continue to damage the business, market, reputation, and goodwill of IR.
`
`31.
`
`Subject to the Condition, Humangear’s actions in violation of Section 1125(a)
`
`will continue to cause IR to sustain irreparable damage, loss and injury, for which IR has no
`
`adequate remedy at law.
`
`INDUSTRIAL REVOLUTION, INC.’S ANSWER
`AFFIRMATIVE DEFENSES, AND
`COUNTERCLAIM
`2:23-cv-00102
`
`14
`
`SEED INTELLECTUAL PROPERTY LAW GROUP LLP
`701 FIFTH AVENUE, SUITE 5400
`SEATTLE, WASHINGTON 98104-7092
`(206) 622-4900
`
`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 2:23-cv-00102-LK Document 12 Filed 03/27/23 Page 15 of 17
`
`
`
`THIRD CAUSE OF ACTION: WASHINGTON CONSUMER PROTECTION ACT
`
`(RCW 19.86.090)
`
`32.
`
`IR repeats and re-alleges each allegation set forth in the preceding paragraphs of
`
`these counterclaims as if fully set forth herein.
`
`33.
`
`Subject to the Condition, Humangear’s actions in using the UNO Mark in
`
`connection with its utensils constitutes an unfair or deceptive action in the conduct of trademark
`
`or commerce that affects the public interest has caused or is likely to cause injury in IR’s
`
`business or property, including without limitation the loss of goodwill in IR’s UCO Mark.
`
`34.
`
`Subject to the Condition, Humangear’s actions in violation of RCW 19.86 have
`
`been and continue to be willful as Humangear has been on constructive notice of the UCO
`
`Registrations and on actual notice of IR’s UCO Mark since at least as early March 17, 2022,
`
`when counsel for Humangear wrote to IR concerning its UCO products.
`
`35.
`
`Subject to the Condition, Humangear’s actions in violation of RCW 19.86 have
`
`caused and will continue to cause IR to sustain damage, loss, and injury in an amount that
`
`cannot be fully measured or compensated in economic terms as they have damaged and will
`
`continue to damage the business, market, reputation, and goodwill of IR.
`
`36.
`
`Subject to the Condition, Humangear’s actions in violation of RCW 19.86 will
`
`continue to cause IR to sustain irreparable damage, loss and injury, for which IR has no
`
`adequate remedy at law.
`
`FOURTH CAUSE OF ACTION: CANCELLATION OF REGISTRATION FOR UNO
`
`(15 U.S.C. § 1119)
`
`37.
`
`IR repeats and re-alleges each allegation set forth in the preceding paragraphs of
`
`these counterclaims as if fully set forth herein.
`
`38.
`
`Section 37 of the Lanham Act (15 U.S.C. § 1119) confers on the Court the power
`
`to order the cancellation of registrations, in whole or in part with respect to the registrations of
`
`any party to this action.
`
`INDUSTRIAL REVOLUTION, INC.’S ANSWER
`AFFIRMATIVE DEFENSES, AND
`COUNTERCLAIM
`2:23-cv-00102
`
`15
`
`SEED INTELLECTUAL PROPERTY LAW GROUP LLP
`701 FIFTH AVENUE, SUITE 5400
`SEATTLE, WASHINGTON 98104-7092
`(206) 622-4900
`
`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 2:23-cv-00102-LK Document 12 Filed 03/27/23 Page 16 of 17
`
`
`
`39.
`
`Subject to the Condition, the UNO Registration should be cancelled pursuant to
`
`Section 2(d) and Section 14 of the Lanham Act (15 U.S.C. §§ 1052(d), 1064) because it consists
`
`of a mark which so resembles the UCO Mark as to be likely when used on or in connection with
`
`the goods for which the UNO Mark is registered to cause confusion, or to cause mistake, or to
`
`deceive.
`
`RELIEF REQUESTED
`
`
`Having answered Plaintiff Humangear’s Complaint and asserted its Counterclaim,
`
`Defendant-Counterclaimant IR prays for judgment as follows:
`
`A.
`
`B.
`
`That Plaintiff Humangear takes nothing by its Complaint;
`
`That the Court dismiss each and every claim in Plaintiff’s’ Complaint with
`
`prejudice, and that all relief requested by the Plaintiff be denied;
`
`C.
`
`That subject to the Condition, the Court enter judgment on IR’s Counterclaim as
`
`follows:
`
`a. Awarding IR its actual damages, Humangear’s profits, and enhanced
`
`damages and profits, pursuant to 15 U.S.C. § 1117;
`
`b. Awarding IR its actual damages, enhanced damages in an amount up to three
`
`times actual damages, and the costs of suit including a reasonable attorney’s
`
`fee, pursuant to RCW 19.86.090;
`
`c. Enjoining Humangear from any use of the UNO Mark in connection with its
`
`goods or services;
`
`d. Declaring that this is an exceptional case within the meaning of 15 U.S.C. §
`
`1117 and awarding IR a reasonable attorney’s fee pursuant to 15 U.S.C. §
`
`1117; and
`
`e. Directing the U.S. Patent & Trademark Office to cancel the UNO
`
`Registration.
`
`INDUSTRIAL REVOLUTION, INC.’S ANSWER
`AFFIRMATIVE DEFENSES, AND
`COUNTERCLAIM
`2:23-cv-00102
`
`16
`
`SEED INTELLECTUAL PROPERTY LAW GROUP LLP
`701 FIFTH AVENUE, SUITE 5400
`SEATTLE, WASHINGTON 98104-7092
`(206) 622-4900
`
`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 2:23-cv-00102-LK Document 12 Filed 03/27/23 Page 17 of 17
`
`
`
`D.
`
`Awarding or granting such other or further relief as the Court may deem just,
`
`lawful, or equitable.
`
`DEMAND FOR JURY TRIAL
`
`Defendant demands a jury on all issues so triable.
`
`
`
`DATED this 27th day of March 2023.
`
`Respectfully submitted:
`
`
`
`
`
`Marc C. Levy, WSBA No. 19203
`Kevin S. Costanza, WSBA No. 25153
`SEED IP LAW GROUP LLP
`701 Fifth Avenue, Suite 5400
`Seattle, WA 98104
`Telephone: 206-622-4900
`MarcL@seedip.com
`KevinC@seedip.com
`
`Attorneys for Defendant-Counterclaim Plaintiff
`Industrial Revolution, Inc.
`
`
`9139736_1
`
`INDUSTRIAL REVOLUTION, INC.’S ANSWER
`AFFIRMATIVE DEFENSES, AND
`COUNTERCLAIM
`2:23-cv-00102
`
`17
`
`SEED INTELLECTUAL PROPERTY LAW GROUP LLP
`701 FIFTH AVENUE, SUITE 5400
`SEATTLE, WASHINGTON 98104-7092
`(206) 622-4900
`
`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
`
`