Thomas E. Scanlon, OSB #152278 

tscanlonesq@gmail.com 

THE LAW OFFICE OF 

THOMAS E. SCANLON, LLC. 

650 NE Holladay Street 

Suite 1600 #60 

Portland, OR 97232 

Tel: 503-908-4672 

Fax: 503-710-9064 

Counsel for the Plaintiff, Bridgit Beasley, P.C. 

d.b.a Blue Sky Wellness Studio 

IN THE UNITED STATES DISTRICT COURT 

FOR THE DISTRICT OF OREGON

PORTLAND DIVISION 

____________________________________ 

BRIDGIT BEASLEY, P.C. d/b/a Civil Action No.:__________ 

BLUE SKY WELLNESS STUDIO 

 

 Plaintiff, COMPLAINT FOR

 TRADEMARK INFRINGEMENT

 v. 

 JURY TRIAL REQUESTED

BLUE SKY OF PORTLAND, LLC. 

 

 Defendant. 

____________________________________ 

 Plaintiff, Bridgit Beasley, P.C. d/b/a Blue Sky Wellness Studio (“Plaintiff”), alleges as 

follows: 

Parties 

 1. Plaintiff, at all times relevant to this matter, is an Oregon Professional Corporation 

with its principal place of business at 3944 N Mississippi Avenue, Portland, Oregon, 97227. 

COMPLAINT - 1

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 2. Upon information and belief, Defendant Blue Sky of Portland, LLC. is a limited 

liability company organized under the laws of the State of Oregon with a principal place of 

business at 729 SE Powell Boulevard, Portland, Oregon 97202. 

Jurisdiction and Venue 

 3. This is an action arising under the laws of the United States, Oregon Statutory 

Law, and the Common Law. This Honorable Court has jurisdiction to hear all issues presented 

by this matter pursuant to 28 U.S.C. §1331 (federal question), 28 U.S.C. §1338 (acts of Congress 

relating to trademarks and unfair competition), 15 U.S.C.S. §1125 (false designation of origin, 

false descriptions, and dilution forbidden) and 28 U.S.C. §1367 (supplemental jurisdiction for 

related state law claims). 

 4. Venue is proper in this district pursuant to 28 U.S.C. §1391(b). 

Facts 

 5. Plaintiff is a well-known provider of health and wellness related services, with 

clients situated throughout the Portland metropolitan area and beyond. 

 6. Plaintiff has used “Blue Sky Wellness” as part of its name in trade continuously 

since at the latest, May 2007. 

 7. Plaintiff has promoted itself using “Blue Sky Wellness” through brochures, 

mailings, advertisements, and through its web site at www.blueskyportland.com. 

 8 Plaintiff is the owner of U.S. Application No. 86827868 (the “Application”) for 

“Blue Sky Wellness Studio” for use in connection with acupuncture; Alternative medicine 

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services; Bodywork therapy services, namely, Craniosacral therapy; Chiropractics; Consulting in 

the field of health and wellness to bring about personal happiness; Consulting services in the 

field of health; Consulting services in the fields of health and nutrition; Counseling services in 

the fields of health, nutrition and lifestyle wellness; Health care services, namely, wellness 

programs; Health spa services for health and wellness of the body and spirit; Holistic health 

services; Massage therapy services; Medical services in the field of Naturopathic Primary Care; 

Physical rehabilitation; Providing a website featuring information about health, wellness and 

nutrition; Providing a website featuring information concerning alternative health and healing; 

Providing health information; Providing healthcare information; Providing healthy lifestyle and 

nutrition services, namely, personal assessments, personalized routines, maintenance schedules, 

and counseling; Providing information, news and commentary in the field of nutrition, health and 

wellness; Stress reduction therapy. A copy of the application information retrieved from the U.S. 

Patent and Trademark Office’s online public records is attached hereto as Exhibit A. 

 9. The adoption, use, and registration of “Blue Sky Wellness Studio” and 

blueskyportland.com was in good faith and was the first use of those marks in association with, 

inter alia, health and wellness services and/or alternative medicine. 

 10. Plaintiff has spent, and continues to spend significant time, effort, and money in 

the promotion and advertisement of its services identified by and distinguished by its marks. By 

reason of such substantial promotion and advertising and the high quality of its services 

associated with said marks, Plaintiff has attained and now enjoys valuable goodwill and enviable 

reputation in the marketplace with respect to its marks and services. The public has come to 

COMPLAINT - 3

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know, rely upon, and associate Plaintiff’s services with, and to recognize Plaintiff’s services with 

its marks. 

 11. Plaintiff’s continuous use of Blue Sky Wellness Studio and blueskyportland.com 

in commerce entitles Plaintiff to trademark protection. 

Defendant’s Infringing Activities 

 12. Upon information and belief, in April 2015, Defendant registered as a Limited 

Liability Company with the Oregon Secretary of State. At around the same time, Defendant 

registered www.blueskyofportland.com with a domain name registry service. 

 13. Upon information and belief, Defendant uses “Blue Sky Wellness Center” on its 

advertising, its building, and its website. 

 14. Defendant offers itself, inter alia, as a provider of “medicine” and heath related 

services as a medical marijuana dispensary. 

 15. On its website, Defendant states “Here at Blue Sky, we pride ourselves on the 

quality of our medication, the attention we give to patients, and the ability to go the extra mile 

for you.” Retrieved from www.blueskyofportland.com on November 20, 2015. Further, 

Defendant advertises consulting services associated with medical marijuana. 

 16. Upon information and belief, Defendant had notice of Plaintiff’s use of “Blue Sky 

Wellness Studio” and www.blueskyportland.com prior to commencing business under “Blue Sky 

Wellness Center” and www.blueskyofportland.com. 

 17. “Blue Sky Wellness Center” and www.blueskyofportland.com are only slight 

variations of Plaintiff’s marks having confusingly similar meanings and appearance. 

COMPLAINT - 4

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 18. Defendant’s use of “Blue Sky Wellness Center” and www.blueskyofportland.com, 

is likely to cause confusion among the public and customers as to the services available from 

Plaintiff and is likely to cause customers to believe that Defendant’s services are endorsed by, 

sponsored by, affiliated with, or in some way connected to Plaintiff. 

 19. Defendant’s use of “Blue Sky Wellness Center” and www.blueskyofportland.com, 

has caused actual confusion among the public and Plaintiff’s customers. 

 20. Defendant’s use of “Blue Sky Wellness Center” and www.blueskyofportland.com, 

will continue to cause actual confusion among the public and Plaintiff’s customers, and unless 

restrained by this Honorable Court, serious and irreparable injury to Plaintiff and the goodwill 

associated with Plaintiff’s marks. 

 21. Plaintiff’s remedies at law are not adequate to compensate for the injury caused 

by Defendant’s actions because Plaintiff is entitled to be in exclusive control of its marks as used 

in association with alternative medicine and health and wellness associated therapeutic services 

in order to prevent the likelihood that customers may be confused, mistaken, or deceived into 

believing that the services and products sold by Defendant in some way originate with Plaintiff, 

or are endorsed by, sponsored by, affiliated with, or in some way connected with Plaintiff. As 

long as Defendant is allowed to continue the acts complained of, Plaintiff’s reputation is at 

Defendant’s mercy. 

 22. Plaintiff is entitled to recover all profits derived from Defendant’s acts of 

infringement, unfair competition, and unfair trade and business practices, including treble 

damages, together with all attorney’s fees and costs incurred by Plaintiff. 

COMPLAINT - 5

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 23. By letter dated July 17, 2015, Plaintiff advised Defendant that its use of 

Defendant’s use of “Blue Sky Wellness Center” and www.blueskyofportland.com, was causing 

confusion among Plaintiff’s customers, damaging Plaintiff’s business reputation, and likely 

causing Plaintiff to lose income. A true and complete copy of said letter is attached hereto as 

Exhibit B. Nevertheless, Defendant continued to use “Blue Sky Wellness Center” and 

www.blueskyofportland.com, with knowledge of the damage said use was causing Plaintiff. As 

such, Defendant’s continued acts of infringement are knowing, willful, egregious and in 

disregard of Plaintiff’s rights. 

24. Defendant acknowledged that it was required to change its name by way of a 

Facebook post dated October 9, 2015. Said post states: 

We need a NEW NAME and want YOUR HELP! Stop by and give 

us your best idea for a name of our shop and if yours is selected 

you win an ounce*! 

**First 250 entries considered. If winner is recreational, ounce will 

be distributed over four days for $.01/quarter, per daily limit** 

You got this. 

(Retrieved from https://www.facebook.com/blueskyoforegon on November 20, 2015.) 

As such, Defendant’s continued acts of infringement are knowing, willful, egregious and in 

disregard of Plaintiff’s rights. 

 25. By and through counsel, by letter dated October 30, 2015, Plaintiff notified 

Defendant for a second time that Defendant’s continued infringement was causing Plaintiff harm. 

Defendant has not responded to this letter in any way. A true and complete copy of said letter is 

attached hereto as Exhibit C. 

COMPLAINT - 6

Case 3:15-cv-02327-JE Document 1 Filed 12/14/15 Page 6 of 10
COUNT I

Federal Unfair Competition Violations

 25. Plaintiff incorporates paragraphs 1-22 of this Complaint as though fully set forth 

herein. 

 26. Defendant’s actions constitute unfair competition under Section 43(a)(1) of the 

Lanham Act 15 U.S.C. § 1125(a)(1).

COUNT II 

State and Common Law Trademark Infringement 

 23. Plaintiff incorporates paragraphs 1-22 of this Complaint as though fully set forth 

herein. 

 24. Defendant’s actions described herein constitute infringement of Plaintiff’s 

trademark rights in violation of ORS 647.095 and Oregon Common Law. 

COUNT III 

State Unlawful Trade and Business Practices 

 27. Plaintiff incorporates paragraphs 1-22 of this Complaint as though fully set forth 

herein. 

 28. Defendant’s actions constitute unlawful business and trade practices in violation 

of ORS § 646.608 and Oregon Common Law.

COMPLAINT - 7

Case 3:15-cv-02327-JE Document 1 Filed 12/14/15 Page 7 of 10
PRAYER FOR RELIEF 

WHEREFORE, Plaintiff Bridgit Beasley, P.C. d/b/a Blue Sky Wellness Studio prays this 

Honorable Court declare and a judgment be entered as follows: 

 A. That Defendant be held liable under each claim for relief set forth in Plaintiff’s 

complaint; 

 B. That Defendant’s trademark infringement, unfair competition, and unlawful 

business and trade practices have been willful; 

 C. That Defendant, its agents, servants, employees, attorneys, successors, assigns, 

and all other persons, firms and corporations acting in concert or in participation with Defendant 

be permanently enjoined from: 

 (1) using “Blue Sky Wellness Center” and blueskyofportland.com or a 

colorable imitation thereof; 

 (2) using in any manner any other mark that is confusingly similar to 

 Plaintiff’s marks; 

 (3) infringing Plaintiff’s trademark rights identifies herein; and 

 (4) committing unfair competition and unfair business practices as 

detailed herein; 

 D. That Defendant be enjoined from filing or required to withdraw, cancel or 

abandon any and all registrations or applications to register any trademarks, trade names or 

business names containing “Blue Sky Wellness,” or any other colorable imitation or confusingly 

similar variation of Plaintiff’s marks. 

COMPLAINT - 8

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 E. That Defendant be required to transfer the infringing blueskyofportland.com 

domain registration to Plaintiff; 

 F. That Defendant file with this Honorable Court and serve on Plaintiff in 

accordance with 15 U.S.C. §1116 within 30 days after service on Defendant of such injunction, a 

report in writing and under oath, setting forth in detail the manner and form in which it has 

complied with this injunction; 

 G. That in accordance with 15 U.S.C. § 1118, Defendant deliver to Plaintiff for 

destruction or other disposition, all goods, labels, signs, prints, packages, wrappers, 

advertisements, business forms, letterheads and promotional materials bearing or displaying any 

marks or other term similar to Plaintiff’s marks as to be likely to cause confusion, deception or 

mistake, in Defendant’s possession, custody or control (and to recall for such purpose any such 

products and materials in possession, custody or control of any other person), as well as any 

reproduction, counterfeit, copy or colorable imitation thereof; 

 H. That Defendant be required to pay to Plaintiff, all damages Plaintiff has suffered 

and will suffer by reason of Defendant’s unlawful acts herein, together with prejudgment interest 

from the date of accrual thereof; 

 I. That defendant be required to account for and pay to Plaintiff all profits wrongly 

derived by Defendant through its unlawful acts set forth herein, together with prejudgment 

interest from the date of accrual thereof; 

 J. That because of the willful nature of Defendant’s infringement, and pursuant to 15 

U.S.C. §1117, the court enter a judgment for Plaintiff for three times the amount of profits or 

damages, whichever is higher; 

COMPLAINT - 9

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 K. That Defendant be required to pay Plaintiff its reasonable attorney’s fees and 

disbursements incurred herein, pursuant to 15 U.S.C. § 1117, ORS §646.638, and the equity 

powers of this Honorable Court; 

 L. That Defendant be required to pay to Plaintiff the costs of this action; 

 M. That, pursuant to ORS § 646.638, the Court award punitive damages against 

Defendant for its willful and egregious deception of customers, infringement of Plaintiff’s rights 

and unlawful trade and business practices; and 

 N. That this Honorable Court award Plaintiff such other and further relief as this 

Honorable Court deems just and appropriate. 

JURY DEMAND 

 Pursuant to Fed. R. Civ. P 38, Plaintiff demands a jury trial on all issues triable to a jury.

Dated: December 14, 2015 

 Respectfully Submitted, 

 

 By: s/ Thomas E. Scanlon 

 Thomas E. Scanlon, OSB #152278 

 tscanlonesq@gmail.com 

 THE LAW OFFICE OF 

 THOMAS E. SCANLON, LLC. 

 650 NE Holladay Street 

 Suite 1600 #60 

 Portland, OR 97232 

 Tel: 503-908-4672 

 Fax: 503-710-9064 

 

 Counsel for the Plaintiff, Bridgit Beasley, 

 P.C. d.b.a Blue Sky Wellness Studio

COMPLAINT - 10

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