KELL, ALTERMAN & RUNSTEIN, L.L.P.

ATTORNEYS AT LAW

520 SW YAMHILL, SUITE 600

PORTLAND, OR 97204

TELEPHONE (503) 222-3531

FACSIMILE (503) 227-2980

COMPLAINT

00113066

Page 1

DENNIS STEINMAN, OSB No. 954250

dsteinman@kelrun.com

THOMAS R. RASK, III, OSB No. 934031

trask@kelrun.com

SCOTT J. ALDWORTH, OSB No. 113123

saldworth@kelrun.com

MATHEW W. LAURITSEN, OSB No. 083949

mlauritsen@kelrun.com

Kell, Alterman & Runstein, L.L.P.

520 S.W. Yamhill, Suite 600

Portland, OR 97204

Telephone: 503/222-3531

Fax: 503/227-2980

Attorneys for Plaintiff

UNITED STATES DISTRICT COURT

DISTRICT OF OREGON

PORTLAND DIVISION

TUATARA ENTERPRISES, INC., dba

BESAW’S, an Oregon corporation,

Plaintiff,

v.

C.E. JOHN PROPERTIES 65, LLC, an 

Oregon limited liability company,

Defendant.

CV. 0:15-cv-749

COMPLAINT

(Declaratory Judgment – Trademark 

Dispute)

JURY TRIAL DEMANDED

Plaintiff alleges as follows:

I. JURISDICTION AND VENUE

1. This is an action at law and in equity for declaratory judgment under the Federal 

Declaratory Judgment Act (28 U.S.C. § 2201 et seq.) and Rule 57 of the Federal Rules of Civil 

Procedure, for a declaratory judgment of non-infringement and related issues, namely:

Case 3:15-cv-00749-BR Document 1 Filed 05/01/15 Page 1 of 12
KELL, ALTERMAN & RUNSTEIN, L.L.P.

ATTORNEYS AT LAW

520 SW YAMHILL, SUITE 600

PORTLAND, OR 97204

TELEPHONE (503) 222-3531

FACSIMILE (503) 227-2980

COMPLAINT

00113066

Page 2

a. Plaintiff Tuatara Enterprises, Inc., dba Besaw’s (“Plaintiff”) owns the 

BESAW’S name and mark in connection with restaurant and related services;

b. Defendant C.E. John Properties 65, LLC (“Defendant”) owns no interest 

in or right to the BESAW’S name and mark;

c. Plaintiff’s use of the BESAW’S name and mark will not infringe or 

otherwise interfere with any rights of Defendant;

d. Defendant’s or its purported licensee’s use of the BESAW’S name and 

mark will infringe the rights of Plaintiff in the name and mark;

e. Defendant’s pending federal trademark registration application, Serial No. 

86518024, for the BESAW’S mark is invalid and void ab initio, and Defendant must 

voluntarily abandon the application;

f. Plaintiff’s pending federal trademark registration applications, Serial Nos. 

86567183 and 86567209, for the BESAW’S mark is “standard character” work and 

stylized/logo formats are valid and not subject to opposition or challenge by Defendant; 

g. Any registrations that issue from Plaintiff’s applications are not subject to 

a cancellation action or other challenge by Defendant; and

h. Plaintiff has not violated, is not violating, and will not violate federal or 

state trademark or unfair competition laws by using the BESAW’S mark in the future, 

including but not limited to Sections 32 and 43 of the Lanham Act, 15 U.S.C. §§ 1114 

and 1125, or the statutory or common law of any state.

2. The claims set forth in this Complaint for Declaratory Judgment arise under the 

above-referenced laws of the United States and involve an actual controversy between Plaintiff 

and Defendant as to whether Plaintiff will infringe Defendant’s alleged trademark rights by 

continuing to operate a restaurant using the BESAW’S name and mark, and whether Defendant 

will infringe Plaintiff’s trademark rights by using the BESAW’S name and mark in connection 

Case 3:15-cv-00749-BR Document 1 Filed 05/01/15 Page 2 of 12
KELL, ALTERMAN & RUNSTEIN, L.L.P.

ATTORNEYS AT LAW

520 SW YAMHILL, SUITE 600

PORTLAND, OR 97204

TELEPHONE (503) 222-3531

FACSIMILE (503) 227-2980

COMPLAINT

00113066

Page 3

with restaurant or related services, regardless of whether such use is by Defendant or a purported 

licensee of Defendant.

3. This case further involves an actual controversy between the parties as to the 

parties’ ownership of the BESAW’S mark and the validity of each party’s respective federal 

trademark registration applications.

4. This Court has jurisdiction over the subject matter and the parties under 

Section 39 of the Lanham Act, 15 U.S.C. § 1121, as well as 28 U.S.C. §§ 1331 and 1338.

5. This District is a proper venue pursuant to 28 U.S.C. § 1391(b) and (c) because (i)

a substantial part of the events giving rise to Plaintiff’s claim occurred in the District; (ii) a 

substantial part of the property that is the subject of this dispute (namely, Plaintiff’s trademark 

rights and accompanying goodwill) are situated in the District; and (iii) Defendant is subject to 

personal jurisdiction in Oregon.

6. This Court has personal jurisdiction over Defendant because it is an Oregon 

limited liability company and it engages in substantial business activities in the State of Oregon. 

II. PARTIES

7. Plaintiff is a corporation organized and existing under the laws of the State of 

Oregon, having its principal place of business at 2301 NW Savier Street, Portland, Oregon, 

97210.

8. Defendant is a limited liability company organized and existing under the laws of 

the State of Oregon, having its principal place of business at 1701 SE Columbia River Drive, 

Vancouver, Washington, 98661.

III. FACTS

9. Over a number of years, various persons and entities have owned and operated a 

restaurant named “Besaw’s” in Portland. In each of those cases, the owner/operator owned the

Case 3:15-cv-00749-BR Document 1 Filed 05/01/15 Page 3 of 12
KELL, ALTERMAN & RUNSTEIN, L.L.P.

ATTORNEYS AT LAW

520 SW YAMHILL, SUITE 600

PORTLAND, OR 97204

TELEPHONE (503) 222-3531

FACSIMILE (503) 227-2980

COMPLAINT

00113066

Page 4

business and goodwill, and leased the restaurant space from a landlord. Throughout this time, 

there were long periods in which no one operated a restaurant using the “Besaw’s” name.

10. In or about 1993, Besaw’s Café, Inc. purchased the Besaw’s restaurant from Bill 

and Judy Sacheck, who owned it at the time. Besaw’s Café, Inc. then operated the restaurant at 

2301 NW Savier Street, Portland, Oregon for approximately the next 12 years, leasing restaurant 

space from the then-building owner, Jones Group Associates (“Jones Group”).

11. On or about March 30, 2005, Besaw’s Café, Inc. signed a new lease and 

addendum (the “Lease”) with Jones Group. Under the Lease, Jones Group purported to grant to 

Besaw’s Café, Inc. permission to use the “Besaw’s” name in connection with the operation of a 

restaurant.

12. Jones Group never itself operated a restaurant using the name “Besaw’s” and has 

never used the term “Besaw’s” as a trademark.

13. The Lease had no provisions restricting Besaw’s Café, Inc. in the operation of its 

restaurant under the name “Besaw’s.” The Lease had no “quality control” provisions, including 

(by way of example only), provisions governing the types or quality of food served under the 

name “Besaw’s” or the restaurant’s décor. The Lease had no provisions relating to the quality of

service provided to customers under the name “Besaw’s.” 

14. Under the Lease, Jones Group had no right or ability to enforce any food or 

service quality levels, or to terminate the Lease if the quality of food or service maintained by 

Besaw’s Café, Inc. did not meet a particular standard.

15. On information and belief, Jones Group, in its capacity as landlord or otherwise,

did not monitor the quality of the food or service maintained by Besaw’s Café, Inc. while 

operating under the name “Besaw’s.”

16. On or about June 16, 2005, Plaintiff executed an Agreement for Sale and 

Purchase of Business Assets to purchase the Besaw’s restaurant from Besaw’s Café, Inc. The 

Case 3:15-cv-00749-BR Document 1 Filed 05/01/15 Page 4 of 12
KELL, ALTERMAN & RUNSTEIN, L.L.P.

ATTORNEYS AT LAW

520 SW YAMHILL, SUITE 600

PORTLAND, OR 97204

TELEPHONE (503) 222-3531

FACSIMILE (503) 227-2980

COMPLAINT

00113066

Page 5

agreement specified that the “Seller’s name and goodwill” were among the assets sold to 

Plaintiff.

17. On or about June 23, 2005, Jones Group agreed to an assignment of the Lease 

from Besaw’s Café, Inc. to Plaintiff.

18. On or about June 23, 2005, Plaintiff took over operations of the Besaw’s 

restaurant and Jones Group remained landlord of the property. 

19. Jones group continued as landlord from June 2005 to November 2011 and, during 

that time, Jones Group did not monitor the quality of the food or service at Plaintiff’s Besaw’s

restaurant.

20. On or about November 16, 2011, Jones Group executed a Statutory Special 

Warranty Deed conveying the real property at 2301 NW Savier Street, Portland, Oregon (where 

the Besaw’s restaurant was and still is located) to Defendant. 

21. At that time, Defendant took over as Plaintiff’s landlord under the Lease.

22. From that time to the present, Defendant did not monitor the quality of the food, 

décor, or service maintained by Plaintiff while Plaintiff operated under the name “Besaw’s.”

23. In the decade that Plaintiff has operated the Besaw’s restaurant, Plaintiff has

improved the reputation and goodwill of the restaurant and the “Besaw’s” name and mark 

substantially, taking it from a local lunch counter to a popular and respected upscale bistro with 

full lunch and dinner service.

24. Consumers associate the “Besaw’s” name and mark, and the reputation and 

goodwill in the mark and the Besaw’s restaurant, with Plaintiff.

25. The Lease is due to terminate on May 31, 2015, but Defendant has refused to 

negotiate with Plaintiff on extending the current lease or entering into a new lease. 

/ / /

/ / /

Case 3:15-cv-00749-BR Document 1 Filed 05/01/15 Page 5 of 12
KELL, ALTERMAN & RUNSTEIN, L.L.P.

ATTORNEYS AT LAW

520 SW YAMHILL, SUITE 600

PORTLAND, OR 97204

TELEPHONE (503) 222-3531

FACSIMILE (503) 227-2980

COMPLAINT

00113066

Page 6

26. Instead, Defendant has stated publicly that it intends to enter into an agreement 

with another company to rent the space and to purportedly authorize that company to operate a 

restaurant under the name “Besaw’s” at the property.

27. On or about January 29, 2015, Defendant filed federal trademark registration 

application Serial No. 86518024 for the mark BESAW’S with the United States Patent and 

Trademark Office. In its application, Defendant claimed that it had used the mark in commerce 

in connection with “restaurant services” since 1903. As part of the application, Defendant had to 

demonstrate use of the mark and, for that purpose, Defendant submitted a menu from the 

restaurant owned and operated by Plaintiff. The menu was wholly conceived and developed by 

Plaintiff, as were the recipes for all of the items listed on the menu.

28. On or about March 17, 2015, Plaintiff filed federal trademark registration

application Serial No. 86567183 for the mark BESAW’S for “restaurant services including sitdown service of food, catering, and take-out restaurant services.” The same day, Plaintiff also 

filed application Serial No. 86567209 for the BESAW’S mark in the following stylized/logo

format:

29. On or about March 20, 2015, Plaintiff sent a letter to Defendant demanding that it 

withdraw its trademark application for the BESAW’S mark because Plaintiff is the lawful owner 

of the mark.

30. On or about April 9, 2015, Defendant responded to Plaintiff, claiming that

Defendant is the owner of the BESAW’S trademark and threatening to take legal action against 

Plaintiff if Plaintiff uses the BESAW’S mark after the Lease terminates on May 31, 2015. 

Case 3:15-cv-00749-BR Document 1 Filed 05/01/15 Page 6 of 12
KELL, ALTERMAN & RUNSTEIN, L.L.P.

ATTORNEYS AT LAW

520 SW YAMHILL, SUITE 600

PORTLAND, OR 97204

TELEPHONE (503) 222-3531

FACSIMILE (503) 227-2980

COMPLAINT

00113066

Page 7

31. In its April 9, 2015 letter, Defendant stated, “If Tuatara persists in its threat to 

pursue unwarranted claims of ownership of the BESAW’S mark, contrary to its obligations 

under the Lease, C.E. John will pursue all remedies in response to such an action, including 

seeking an award of attorneys’ fees under the Lanham Act, 15 U.S.C. § 1117(a), and/or under the 

Lease.”

32. Plaintiff has secured an alternative restaurant space and intends to reopen Besaw’s

in a new location.

33. There exists an actual controversy between the parties over their respective 

trademark rights in the BESAW’S name and mark, including whether one party will infringe the 

other party’s rights by using the BESAW’S mark in connection with restaurant services. 

34. In light of Defendant’s threats to take action against Plaintiff if it continues to use 

the BESAW’S mark after termination of the Lease, Plaintiff has been put in apprehension of 

litigation because of Plaintiff’s active plans to reopen Besaw’s in a new location.

35. Accordingly, Plaintiff is entitled to a declaratory judgment order that Plaintiff is 

the lawful owner of the BESAW’S name and mark, Plaintiff is the only party who may properly 

seek federal trademark registration for the BESAW’S mark, and Plaintiff will not infringe the 

rights of Defendant by using the BESAW’S name and mark after termination of the Lease.

36. There is an actual controversy within this Court’s jurisdiction pursuant to 28 

U.S.C. § 2201(a).

FIRST CLAIM FOR RELIEF

(Declaratory Judgment of Non-Infringement of Trademarks)

37. Plaintiff realleges paragraphs 1 through 36 as though fully set forth herein.

38. Defendant has claimed that Plaintiff’s use of the BESAW’S name and mark after 

termination of the Lease will infringe Defendant’s trademark rights, and Defendant has 

threatened legal action against Plaintiff on that basis.

Case 3:15-cv-00749-BR Document 1 Filed 05/01/15 Page 7 of 12
KELL, ALTERMAN & RUNSTEIN, L.L.P.

ATTORNEYS AT LAW

520 SW YAMHILL, SUITE 600

PORTLAND, OR 97204

TELEPHONE (503) 222-3531

FACSIMILE (503) 227-2980

COMPLAINT

00113066

Page 8

39. Defendant has no trademark rights to the BESAW’S mark.

40. Defendant did not and could not have acquired any trademark rights to the 

BESAW’S name and mark when it purchased the property from Jones Group.

41. Jones Group did not and could not have transferred any rights in or to the 

BESAW’S name and mark to Defendant because Jones Group never owned such rights in the 

mark and, to the extent Jones Group ever owned such rights, Jones Group abandoned the mark 

by engaging in uncontrolled and “naked” licensing of the mark under its lease with Besaw’s 

Café, Inc.

42. Independently, Jones Group did not and could not have transferred any rights in 

or to the BESAW’S name and mark in the Special Warranty Deed to Defendant because Jones 

Group never owned such rights in the mark and, to the extent Jones Group ever owned such 

rights, Jones Group abandoned the mark by engaging in uncontrolled and “naked” licensing of 

the mark under its lease with Plaintiff.

43. Also independently, Jones Group did not and could not have transferred any 

rights in or to the BESAW’S name and mark in the Special Warranty Deed to Defendant because 

any attempt to transfer such rights was separate and apart from the business and goodwill 

associated with the BESAW’S name and mark. Such a purported transfer is an assignment in 

gross. Such a purported assignment is invalid, not enforceable, and constitutes an abandonment 

of the mark.

44. By actually and continuously using the BESAW’S mark in commerce since 2005, 

Plaintiff established common law ownership of the BESAW’S mark.

45. As a result, use of the BESAW’S mark by Plaintiff after termination of the Lease 

is lawful and will not infringe any rights of Defendant.

46. Further, Plaintiff’s pending federal trademark registration applications, Serial 

Nos. 86567183 and 86567209, for the BESAW’S mark in “standard character” word and 

Case 3:15-cv-00749-BR Document 1 Filed 05/01/15 Page 8 of 12
KELL, ALTERMAN & RUNSTEIN, L.L.P.

ATTORNEYS AT LAW

520 SW YAMHILL, SUITE 600

PORTLAND, OR 97204

TELEPHONE (503) 222-3531

FACSIMILE (503) 227-2980

COMPLAINT

00113066

Page 9

stylized/logo formats are valid and not subject to opposition or challenge by Defendant. 

Likewise, any registrations that issue from Plaintiff’s applications are not subject to a 

cancellation action or other challenge by Defendant.

47. Plaintiff seeks and is entitled to a declaration from this Court that:

a. Plaintiff owns the BESAW’S name and mark in connection with 

restaurant and related services;

b. Defendant owns no interest in or right to the BESAW’S name and mark;

c. Plaintiff’s use of the BESAW’S name and mark will not infringe or 

otherwise interfere with any rights of Defendant;

d. Plaintiff’s pending federal trademark registration applications, Serial Nos. 

86567183 and 86567209, for the BESAW’S mark is “standard character” work and 

stylized/logo formats are valid and not subject to opposition or challenge by Defendant; 

e. Any registrations that issue from Plaintiff’s applications are not subject to 

a cancellation action or other challenge by Defendant; and

f. Plaintiff has not violated, is not violating, and will not violate federal or 

state trademark or unfair competition laws by using the BESAW’S mark in the future, 

including but not limited to Sections 32 and 43 of the Lanham Act, 15 U.S.C. §§ 1114 

and 1125, or the statutory or common law of any state.

48. Plaintiff is entitled to an award of its attorneys’ fees, costs, and disbursements in 

bringing this action pursuant to 15 U.S.C. § 1117(a).

SECOND CLAIM FOR RELIEF

(Declaratory Judgment of Infringement)

49. Plaintiff realleges paragraphs 1 through 37 and 39 through 45 as though fully set 

forth herein.

Case 3:15-cv-00749-BR Document 1 Filed 05/01/15 Page 9 of 12
KELL, ALTERMAN & RUNSTEIN, L.L.P.

ATTORNEYS AT LAW

520 SW YAMHILL, SUITE 600

PORTLAND, OR 97204

TELEPHONE (503) 222-3531

FACSIMILE (503) 227-2980

COMPLAINT

00113066

Page 10

50. Defendant intends to enter into a lease and purported trademark license agreement 

with a third party to operate (on Defendant’s behalf as licensor) a restaurant under the BESAW’S 

mark.

51. If Defendant or its purported licensee (on behalf of Defendant) use the BESAW’S 

mark, Defendant will infringe Plaintiff’s rights in and to the BESAW’S mark.

52. Defendant has also filed a federal trademark registration application for the 

BESAW’S mark, including the inherent claim that Defendant owns the BESAW’S mark.

53. Defendant’s federal registration application for BESAW’S is invalid and void ab 

initio because Defendant owns no rights in the mark.

54. Plaintiff seeks and is entitled to a declaration from this Court that:

a. Defendant’s or its purported licensee’s use of the BESAW’S name and 

mark will infringe the rights of Plaintiff in the name and mark; and

b. Defendant’s pending federal trademark registration application, Serial No. 

86518024, for the BESAW’S mark is invalid and void ab initio, and Defendant must 

voluntarily abandon the application.

55. Plaintiff is entitled to an award of its attorneys’ fees, costs, and disbursements in 

bringing this action pursuant to 15 U.S.C. § 1117(a).

WHEREFORE, Plaintiff prays that Defendant be cited to appear and answer herein and 

that, upon final hearing, Plaintiff have the following relief:

1. A jury trial to determine the factual questions raised herein;

2. That the Court assume jurisdiction over Plaintiff’s claims; 

3. That the Court enter a declaratory judgment that:

a. Plaintiff owns the BESAW’S name and mark in connection with 

restaurant and related services;

b. Defendant owns no interest in or right to the BESAW’S name and mark;

Case 3:15-cv-00749-BR Document 1 Filed 05/01/15 Page 10 of 12
KELL, ALTERMAN & RUNSTEIN, L.L.P.

ATTORNEYS AT LAW

520 SW YAMHILL, SUITE 600

PORTLAND, OR 97204

TELEPHONE (503) 222-3531

FACSIMILE (503) 227-2980

COMPLAINT

00113066

Page 11

c. Plaintiff’s use of the BESAW’S name and mark will not infringe or 

otherwise interfere with any rights of Defendant;

d. Defendant’s or its purported licensee’s use of the BESAW’S name and 

mark will infringe the rights of Plaintiff in the name and mark;

e. Defendant’s pending federal trademark registration application, Serial No. 

86518024, for the BESAW’S mark is invalid and void ab initio, and Defendant must 

voluntarily abandon the application;

f. Plaintiff’s pending federal trademark registration applications, Serial Nos. 

86567183 and 86567209, for the BESAW’S mark is “standard character” work and 

stylized/logo formats are valid and not subject to opposition or challenge by Defendant; 

g. Any registrations that issue from Plaintiff’s applications are not subject to 

a cancellation action or other challenge by Defendant; and

h. Plaintiff has not violated, is not violating, and will not violate federal or 

state trademark or unfair competition laws by using the BESAW’S mark in the future, 

including but not limited to Sections 32 and 43 of the Lanham Act, 15 U.S.C. §§ 1114 

and 1125, or the statutory or common law of any state.

4. An order that Defendant is required to pay Plaintiff’s attorneys’ fees, costs, and 

disbursements in bringing this action; and

/ / /

/ / /

/ / /

/ / /

/ / /

/ / /

/ / /

Case 3:15-cv-00749-BR Document 1 Filed 05/01/15 Page 11 of 12
KELL, ALTERMAN & RUNSTEIN, L.L.P.

ATTORNEYS AT LAW

520 SW YAMHILL, SUITE 600

PORTLAND, OR 97204

TELEPHONE (503) 222-3531

FACSIMILE (503) 227-2980

COMPLAINT

00113066

Page 12

5. Such other and further relief as this Court may deem just and proper.

DATED this 1

st day of May, 2015.

KELL, ALTERMAN & RUNSTEIN, L.L.P.

s/Dennis Steinman

DENNIS STEINMAN

954250

THOMAS R. RASK, III

934031

SCOTT J. ALDWORTH

113123

MATHEW W. LAURITSEN

083949

503/222-3531

Attorneys for Plaintiff

Case 3:15-cv-00749-BR Document 1 Filed 05/01/15 Page 12 of 12