Case 3:14-cv-00040-BR

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Michael K. Heilbronner OSB No. 010050 MHeilbronner@IdeaLegal.com IdeaLegal, P.C. 1631 NE Broadway; No. 443 Portland, OR 97232 Telephone: (503) 449-9084 Facsimile: (503) 914-0301 Attorney for Defendants UNITED STATES DISTRICT COURT DISTRICT OF OREGON

NIKE, INC., an Oregon Corporation, Plaintiff, v. DBV DISTRIBUTION, INC., a Delaware corporation; and DRAGON BLEU, SARL, an entity existing under the laws of France, Defendants.

Case No. 3:14-cv-00040-BR

ANSWER OF DRAGON BLEU, SARL

Defendant, Dragon Bleu, SARL (Dragon Bleu), respectfully submits this Answer to the Complaint. Except as specifically admitted, Dragon Bleu denies each and every allegation in the Complaint. 1. Dragon Bleu is without sufficient information to admit or deny the allegations

contained in paragraph 1 of the Complaint, and, therefore, Dragon Bleu denies those allegations.

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2. 3.

Dragon Bleu admits the allegations contained in paragraph 2 of the Complaint. Dragon Bleu denies that it has a place of business at 141 avenue de Verdun, F-

92130 Issy les Moulineaux, France. Dragon Bleu admits the other allegations contained in paragraph 3 of the Complaint. 4. 5. 6. 7. 8. 9. Dragon Bleu admits the allegations contained in paragraph 4 of the Complaint. Dragon Bleu admits the allegations contained in paragraph 5 of the Complaint. Dragon Bleu admits the allegations contained in Paragraph 6 of the Complaint. Dragon Bleu admits the allegations contained in paragraph 7 of the Complaint. Dragon Bleu denies the allegations contained in paragraph 8 of the Complaint. Dragon Bleu is without sufficient information to admit or deny the allegations

contained in the first sentence of paragraph 9 of the Complaint, and, therefore, Dragon Bleu denies those allegations. Dragon Bleu denies all of the other allegations of Paragraph 9 of the Complaint. 10. Dragon Bleu is without sufficient information to admit or deny the allegations

contained in paragraph 10 of the Complaint, and, therefore, Dragon Bleu denies those allegations. 11. 12. Dragon Bleu denies the allegations contained in paragraph 11 of the Complaint. Dragon Bleu admits that Exhibit A to the Complaint purports to be a record from

the USPTO relating to federal registration No. 2,969,824. Dragon Bleu is without sufficient information to admit or deny all of the other allegations contained in paragraph 12 of the Complaint, and, therefore, Dragon Bleu denies those allegations. 13. Dragon Bleu is without sufficient information to admit or deny the allegations

contained in the first sentence of paragraph 13 of the Complaint, and, therefore, Dragon Bleu
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denies those allegations. Dragon Bleu admits that the Complaint purports to use the phrase VENOM Marks editorially as an internal cross-reference; Dragon Bleu denies all other allegations contained in the second sentence of paragraph 13 of the Complaint. To the extent the phrase Defendants and Their Unlawful Activity as set forth in the unnumbered heading between Paragraphs 13 and 14 of the Complaint includes any allegations, Dragon Bleu denies all such allegations. 14 Dragon Bleu admits that defendants advertise, offer to sell, sell, and/or distribute

certain athletic apparel for mixed martial arts and related fighting sports, as well as certain athletic equipment for mixed martial arts and related fighting sports. Dragon Bleu denies all other allegations contained in Paragraph 14 of the Complaint. 15. Dragon Bleu admits that it operates the websites specified in Paragraph 15 of the

Complaint. Dragon Bleu admits that it advertises, offers to sell, sells, and/or distributes certain athletic apparel for mixed martial arts and related fighting sports, as well as certain athletic equipment for mixed martial arts and related fighting sports in the United States from the www.dragonblue.fr website specified in Paragraph 15 of the Complaint. Dragon Bleu admits that it advertises and offers to sell certain athletic apparel for mixed martial arts and related fighting sports, as well as certain athletic equipment for mixed martial arts and related fighting sports in the United States from the www.venumfight.com website specified in Paragraph 15 of the Complaint. Dragon Bleu admits that DBV Distribution sells and distributes certain athletic apparel for mixed martial arts and related fighting sports, as well as certain athletic equipment for mixed martial arts and related fighting sports in the United States from the www.venumfight.com website specified in Paragraph 15 of the Complaint. Dragon Bleu denies all other allegations in Paragraph 15 of the Complaint.
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16.

Dragon Bleu admits that, in connection with the VENUM mark and

accompanying graphics, logos, trade dress, and other indicia, defendants advertise, offer to sell, sell, and/or distribute certain athletic apparel for mixed martial arts and related fighting sports, as well as certain athletic equipment for mixed martial arts and related fighting sports in the United States. Dragon Bleu admits that Illustration 5 in Paragraph 16 of the Complaint depicts certain athletic apparel for mixed martial arts and related fighting sports, as well as certain athletic equipment for mixed martial arts and related fighting sports bearing the VENUM mark and accompanying graphics, logos, trade dress, and other indicia. Dragon Bleu denies all of the other allegations contained in paragraph 16 of the Complaint. 17. 18. Dragon Bleu denies the allegations contained in paragraph 17 of the Complaint. Dragon Bleu denies that any of defendants products are Infringing Products.

Dragon Bleu denies all of the other allegations contained in paragraph 18 of the Complaint. 19. Dragon Bleu denies the allegations in the first sentence of paragraph 19 of the

Complaint. Dragon Bleu denies that any of defendants products are Infringing Products. Dragon Bleu admits that it advertises, offers to sell, sells, or distributes authentic NIKE products on the www.dragonbleu.fr website, including on the filing date of the Complaint. Dragon Bleu admits that Illustration 6 purports to depict a portion of a screenshot from the www.dragonbleu.fr website. Dragon Bleu denies all of the other allegations contained in Paragraph 19 of the Complaint. 20. Dragon Bleu denies the allegations contained in paragraph 20 of the Complaint.

To the extent the phrase Defendants Contradictory Positions Regarding VENOM and VENUM Trademarks as set forth in the unnumbered heading between Paragraphs 20 and 21 of the Complaint includes any allegations, Dragon Bleu denies all such allegations.
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21.

Dragon Bleu admits that federal registration application Serial Number 79063381

has an effective filing date of November 24, 2008, and an effective priority date of May 27, 2008. Dragon Bleu denies that it filed federal registration application Serial Number 79063381 with the USPTO. Dragon Bleu admits that portions of the mark depicted in and covered by federal registration application Serial Number 79063381 include the word VENUM and a design of a snakes head. Dragon Bleu admits that the USPTO assigned federal registration application Serial Number 79063381 with the serial number 79063381. Dragon Bleu is without sufficient information to admit or deny the allegation that the events alleged in Paragraph 21 of the Complaint to have occurred several years after Plaintiff began using what Plaintiff labels the VENUM Marks or after Plaintiff obtained federal registration No. 2,969,824 occurred several years after Plaintiff began using what Plaintiff labels the VENUM Marks or Plaintiff obtained federal registration No. 2,969,824, and, therefore, Dragon Bleu denies the allegation. 22. Dragon Bleu admits that, in an office action on April 22, 2010, the USPTO

initially refused registration of application Serial No. 79063381 based on a registration that issued before the effective filing date of application Serial No. 79063381. Dragon Bleu admits that a portion of the identification of goods in the registration described in the first sentence of Paragraph 22 of the Complaint includes the phrase, Ski and snowboard wear. Dragon Bleu denies all of the other allegations in Paragraph 22 of the Complaint. 23. Dragon Bleu admits that the language quoted in Paragraph 23 of the Complaint

appears in a portion of its response to an office action filed in the USPTO on October 22, 2010. Dragon Bleu denies all other allegations in Paragraph 23 of the Complaint. 24. Dragon Bleu admits the first sentence of Paragraph 24 of the Complaint. Dragon

Bleu admits that the language quoted in Paragraph 24 of the Complaint appears in separate
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portions of its response to an office action filed in the USPTO on October 22, 2010. Dragon Bleu denies all of the other allegations contained in Paragraph 24 of the Complaint. 25. Dragon Bleu admits that the USPTO issued federal registration No. 3,927,787.

Dragon Bleu is without sufficient information to admit or deny all of the other allegations contained in paragraph 25 of the Complaint, and, therefore, Dragon Bleu denies those allegations. 26. Dragon Bleu admits that it has filed trademark registration applications in other

countries that include the word VENUM as a portion of the mark covered by the applications. Dragon Bleu admits that the Complaint purports to use the phrase DB Marks editorially as an internal cross-reference; Dragon Bleu denies all other allegations contained in the paragraph 26 of the Complaint. 27. Dragon Bleu admits that it has filed trademark registration applications in Brazil,

China, Paraguay, and Peru. Dragon Bleu denies all of the other allegations contained in Paragraph 27 of the Complaint. 28. Dragon Bleu admits that the language quoted in Paragraph 28 of the Complaint

appears in a portion of its response to an office action filed in the USPTO on October 22, 2010. Dragon Bleu denies the remaining allegations of Paragraph 28 of the Complaint. 29. 30. Dragon Bleu denies the allegations contained in Paragraph 29 of the Complaint. Dragon Bleu is without sufficient information to admit or deny the allegations

contained in the first sentence of paragraph 30 of the Complaint, and, therefore, Dragon Bleu denies those allegations. Dragon Bleu admits that Plaintiff has filed trademark applications that include the word HYPERVENOM as a portion of the mark depicted in the applications. Dragon

ANSWER OF DRAGON BLEU, SARL

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Bleu admits the allegations contained in the third sentence of Paragraph 30 of the Complaint. Dragon Bleu denies all of the other allegations contained in Paragraph 30 of the Complaint. 31. Dragon Bleu admits that, on November 21, 2013, it filed a lawsuit against

Plaintiff in France seeking injunctive relief. Dragon Bleu admits that, in that lawsuit, it alleges, inter alia, that Plaintiffs use of a mark that includes the term HYPERVENOM, as well as other graphics, logos, and indicia, and in conjunction with other conduct by Plaintiff in connection with the promotion, advertisement, sale, and distribution of soccer boots, violates the trademark and other rights of Dragon Bleu in connection with marks that include the term VENUM. Dragon Bleu denies all of the other allegations contained in paragraph 31 of the Complaint. 32. Dragon Bleu is without sufficient information to admit or deny all of the

allegations contained in paragraph 32 of the Complaint, and, therefore, Dragon Bleu denies those allegations. 33. Dragon Bleu denies that the allegations in paragraph 33 of the Complaint

accurately characterize the parties conduct or arguments or accurately characterize the purported events. Dragon Bleu denies all of the other allegations contained in paragraph 33 of the Complaint. 34. Dragon Bleu re-alleges paragraphs 1 through 33 set forth above, as well as the

unnumbered paragraphs, and incorporates them by reference into this Paragraph 34. 35. Dragon Bleu is without sufficient information to admit or deny the allegations

contained in paragraph 35 of the Complaint, and, therefore, Dragon Bleu denies those allegations. 36. 37. Dragon Bleu denies the allegations contained in paragraph 36 of the Complaint. Dragon Bleu denies the allegations contained in paragraph 37 of the Complaint.
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ANSWER OF DRAGON BLEU, SARL

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38. 39. 40. 41.

Dragon Bleu denies the allegations contained in paragraph 38 of the Complaint. Dragon Bleu denies the allegations contained in paragraph 39 of the Complaint. Dragon Bleu denies the allegations contained in paragraph 40 of the Complaint. Dragon Bleu re-alleges paragraphs 1 through 40 set forth above, as well as the

unnumbered paragraphs, and incorporates them by reference into this paragraph 41. 42. Dragon Bleu is without sufficient information to admit or deny the allegations

contained in paragraph 42 of the Complaint, and, therefore, Dragon Bleu denies those allegations. 43. 44. 45. 46. 47. 48. Dragon Bleu denies the allegations contained in paragraph 43 of the Complaint. Dragon Bleu denies the allegations contained in paragraph 44 of the Complaint. Dragon Bleu denies the allegations contained in paragraph 45 of the Complaint. Dragon Bleu denies the allegations contained in paragraph 46 of the Complaint. Dragon Bleu denies the allegations contained in paragraph 47 of the Complaint. Dragon Bleu re-alleges paragraphs 1 through 47 set forth above, as well as the

unnumbered paragraphs, and incorporates them by reference into this paragraph 48. 49. Dragon Bleu is without sufficient information to admit or deny the allegations

contained in paragraph 49 of the Complaint, and, therefore, Dragon Bleu denies those allegations. 50. 51. 52. 53. 54. Dragon Bleu denies the allegations contained in paragraph 50 of the Complaint. Dragon Bleu denies the allegations contained in paragraph 51 of the Complaint. Dragon Bleu denies the allegations contained in paragraph 52 of the Complaint. Dragon Bleu denies the allegations contained in paragraph 53 of the Complaint. Dragon Bleu denies the allegations contained in paragraph 54 of the Complaint.
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ANSWER OF DRAGON BLEU, SARL

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55.

Dragon Bleu re-alleges paragraphs 1 through 54 set forth above, as well as the

unnumbered paragraphs, and incorporates them by reference into this paragraph 55. 56. 57. Dragon Bleu denies the allegations contained in paragraph 56 of the Complaint. Dragon Bleu denies the allegations contained in paragraph 57 of the Complaint.

Dragon Bleu denies that Plaintiff is entitled to any of the relief sought in the Relief Sought section of the Complaint. First Affirmative Defense Plaintiff's claims are barred by the doctrine of laches. Second Affirmative Defense Plaintiff's claims are barred by the doctrine of acquiescence. Third Affirmative Defense Plaintiff's claims are barred by the doctrines of equitable and judicial estoppel. Fourth Affirmative Defense Plaintiff's claims are barred by the doctrine of unclean hands. [continued on next page]

ANSWER OF DRAGON BLEU, SARL

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Prayer for Relief WHEREFORE, Dragon Bleu respectfully requests the Court to deny Counts I-II in the Complaint and both of the counts in the Complaint labeled Count III and award Dragon Bleu its attorney fees and costs, as well as any further relief as the Court deems just and proper. Dragon Bleu demands a jury trial. DATED: February 10, 2014 IdeaLegal, P.C.

By: s/ Michael Heilbronner Michael Heilbronner OSB No. 010050 IdeaLegal, P.C. 1631 NE Broadway; No. 443 Portland, OR 97232 Telephone: (503) 449-9084 Fax: (503) 914-0301 MHeilbronner@IdeaLegal.com Attorney for Defendants

ANSWER OF DRAGON BLEU, SARL

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