ANSWER AND COUNTERCLAIMS 1

John Mansfield, OSB No. 055390

john@MansfieldLaw.net

MansfieldLaw

121 SW Morrison Ave., Suite 400

Portland, OR 97204

971.271.8615

Attorney for Defendants/counterclaim plaintiffs

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF OREGON

PORTLAND DIVISION

UNIVERSAL TEA COMPANY. INC., dba 

STASH TEA COMPANY, an Oregon 

corporation, 

 Plaintiff, 

v. 

STASH CANNABIS COMPANY, LLC,

an Oregon limited liability company,

WELLSTONE LLC, an Oregon limited

liability company, CHRIS MATTHEWS

and ANTHONY BEAUDOIN

 Defendants.

Case No.: 3:16-CV-00685-HZ

DEFENDANTS’ ANSWER AND 

COUNTERCLAIMS TO FIRST AMENDED 

COMPLAINT

JURY TRIAL DEMANDED

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ANSWER AND COUNTERCLAIMS 1

ANSWER TO PLAINTIFF’S FIRST AMENDED COMPLAINT

Defendants Stash Cannabis Company, LLC, Wellstone LLC, Chris Matthews, and 

Anthony Beaudoin (“Stash Cannabis” except when context indicates otherwise) answers Plaintiff 

Stash Tea’s First Amended Complaint:

A. Jurisdiction and Venue

1. Stash Cannabis admits that this Court has subject matter jurisdiction under 15 

U.S.C. § 1121 and 28 U.S.C. § 1331 and § 1338(a), and jurisdiction over the Oregon statutory 

claim and the common law claims pursuant to 28 U.S.C. § 1367; otherwise denied.

2. Admitted.

B. Introduction

3. Admitted that Stash Cannabis promotes, sells and offers for sale marijuana and 

marijuana-related products, and that Stash Cannabis uses the URL “stashcannabiscompany.com;’

otherwise denied.

C. Plaintiff Stash Tea

4. Admitted that Stash Tea appears to be an Oregon corporation with its principal 

place of business in Tigard, Oregon; otherwise denied.

5. Admitted that Stash Tea has been selling tea since approximately the early 1970s; 

otherwise denied.

6. Admitted that Stash Tea uses various trademarks for tea; otherwise denied.

7. Stash Cannabis lacks knowledge or information sufficient to form a belief about 

the truth of the allegations in this paragraph, and on this basis denies them.

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ANSWER AND COUNTERCLAIMS 2

8. Admitted that Stash Tea makes the assertions stated in this paragraph; otherwise 

denied.

9. Denied.

D. Defendants

10. Admitted.

11. Admitted.

12. Admitted that Mr. Matthews lives in this District and that Mr. Matthews is an 

owner and supervisor of Stash Cannabis; denied that Mr. Matthews personally authorized, 

participated in, or directed any infringement; denied that Mr. Matthews had the right and ability 

to control any infringing acts or that he has a direct financial interest in allegedly infringing 

activity; otherwise denied.

13. Admitted as to the first sentence; the remainder of the paragraph comprises legal 

allegations to which no answer is required, and on that basis denied.

14. Admitted that Mr. Beaudoin is an individual residing in this district; otherwise 

denied.

15. Admitted that Stash Cannabis was administratively dissolved by the Oregon on 

April 14, 2016 and was reinstated April 29, 2016, and that Exhibit C appear to contain accurate 

printouts from the Oregon Secretary of State’s website; otherwise denied.

E. Defendants’ Allegedly Infringing Activities

16. Admitted that Stash Cannabis has used the trademark “Stash Cannabis” to sell 

marijuana and marijuana-related products and services, including the products shown in Exhibit 

D to the First Amended Complaint; otherwise denied.

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ANSWER AND COUNTERCLAIMS 3

17. Denied.

18. Admitted that Stash Cannabis does not need any authorization or license to use 

Stash Tea trademarks; otherwise denied.

19. Admitted that Stash Tea sent the letters attached as Exhibit E to the First 

Amended Complaint, and that it declined to take the actions requested therein; otherwise denied.

20. Denied.

21. Denied.

FIRST CLAIM FOR RELIEF

22. Stash Cannabis repeats its responses to paragraphs 1 through 21.

23. Admitted that Stash Tea alleges claims under Section 32 of the Lanham Act; 

otherwise denied.

24. Denied.

25. Denied.

26. Denied.

27. Denied.

28. Denied.

SECOND CLAIM FOR RELIEF

29. Stash Cannabis repeats its responses to paragraphs 1 through 28.

30. Admitted that Stash Tea alleges claims under Section 43(a) of the Lanham Act; 

otherwise denied.

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ANSWER AND COUNTERCLAIMS 4

31. Denied.

32. Denied.

33. Denied.

34. Denied.

35. Denied.

36. Denied.

THIRD CLAIM FOR RELIEF

37. Stash Cannabis repeats its responses to paragraphs 1 through 36.

38. Admitted that Stash Tea alleges claims under Section 43(a) of the Lanham Act; 

otherwise denied.

39. Denied.

40. Denied.

41. Denied.

FOURTH CLAIM FOR RELIEF

42. Stash Cannabis repeats its responses to paragraphs 1 through 41.

43. Admitted that Stash Tea alleges claims under ORS 647.107; otherwise denied.

44. Denied.

45. Denied.

46. Denied.

47. Denied.

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ANSWER AND COUNTERCLAIMS 5

FIFTH CLAIM FOR RELIEF

48. Stash Cannabis repeats its responses to paragraphs 1 through 47.

49. Admitted that Stash Tea alleges infringement claims under the common law; 

otherwise denied.

50. Denied.

51. Denied.

52. Denied.

FIFTH CLAIM FOR RELIEF

53. Stash Cannabis repeats its responses to paragraphs 1 through 52.

54. Admitted that Stash Tea alleges unfair competition claims under the common law; 

otherwise denied.

55. Denied.

56. Denied.

57. Denied.

58. Denied.

59. Denied.

60. Denied.

AFFIRMATIVE DEFENSES

Without admitting or acknowledging that it bears the burden of proof, Stash Cannabis 

pleads the following defenses:

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ANSWER AND COUNTERCLAIMS 6

1. Stash Tea’s First Amended Complaint fails to state a claim upon which relief can 

be granted.

2. Stash Tea’s claims are barred, in whole or in part, by the doctrines of laches, 

estoppel, waiver, acquiescence, and/or unclean hands.

3. Stash Tea has not suffered any damages as a result of Stash Cannabis’s alleged 

actions.

4. Stash Tea is not entitled to injunctive relief because any alleged injury to Stash 

Tea is not immediate or irreparable, and Stash Tea has an adequate remedy at law.

5. Some or all of Stash Tea’s infringement claims are barred because the trademarks 

are unenforceable or invalid. 

6. Stash Cannabis’s activities constitute fair use within the meaning of the Lanham 

Act.

7. Stash Tea cannot show that this is an exceptional case justifying an award of 

enhanced damages and/or attorneys’ fees pursuant to 15 U.S.C. § 1117 or ORS 

647.105(2). 

8. Some or all of Stash Tea’s claims are barred by the applicable statute(s) of 

limitations.

ADDITIONAL AFFIRMATIVE DEFENSES

Stash Cannabis gives notice that it intends to rely on any additional affirmative defenses 

that become available or apparent during discovery and thus reserves the right to amend its

answer to assert such additional affirmative defenses.

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ANSWER AND COUNTERCLAIMS 7

PRAYER FOR RELIEF

Stash Cannabis asks that judgment be rendered in its favor and that Stash Tea take 

nothing on its claims, that Stash Tea’s claims, and each of them, be dismissed in their entirety 

with prejudice, and that attorney’s fees and costs be awarded to Stash Cannabis under applicable 

law.

STASH CANNABIS’S COUNTER-CLAIM

A. Nature of the action

1. Couunterclaim plaintiff Stash Cannabis seeks declaratory judgment that it has not 

infringed the alleged statutory and common trademarks rights asserted against it by counterclaim 

defendant Stash Tea, that it has not diluted the Stash Tea trademarks, and that it has not unfairly 

competed with Stash Tea.

B. Jurisdiction and venue 

2. This is an action for declaratory judgment arising under (i) the trademark laws of 

the United States, 15 USC § 1051 et seq. (the “Trademark Act”); (ii) ORS statutory and common 

law; and (iii) 28 U.S.C. §§ 2201 and 2202 (the Declaratory Judgment Act). This Court has 

original jurisdiction over the subject matter of this action pursuant to 28U.S.C. §§ 1331 and 

1338.

3. Stash Tea is subject to the personal jurisdiction of this Court because is 

continuously present in Oregon. In addition, Stash Tea’s false assertions of infringement of 

alleged trademarks and statutory rights were filed in this judicial district and directed to Stash 

Cannabis in Oregon. Thus, this Court has both general and specific personal jurisdiction over

Stash Tea.

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ANSWER AND COUNTERCLAIMS 8

4. Venue of this action is proper in this district under 28 U.S.C.§ 1391(b)(1) and (2) 

because Stash Tea is subject to the personal jurisdiction of this Court in this district and thus 

qualifies as a resident under 28 U.S.C.§ 1391(c)(2). In addition, a substantial part of the events 

giving rise to the claims herin has occurred and will continue to occur in this district.

C. Factual background

5. Stash Cannabis repeats paragraphs 1 through 4 here.

6. Stash Cannabis is a leading seller of marijuana and marijuana-related products. 

Stash Cannabis has never sold or offered for sale products that are aimed at consumers of tea. 

All of its consumable products contain cannabis or cannabis-derived compounds. These 

products are sought by consumers in search of marijuana and its associated benefits. 

7. Stash Cannabis is the owner of an Oregon trademark registration for the sale and 

production of medical and recreational cannabis, cannabis products and accessories under the “Stash 

Cannabis” mark.

8. There is no likelihood that consumers seeking the products offered by Stash Tea 

would be confused by Stash Cannabis’s mark for a number of reasons, including without 

limitation: 

a. the marks are not similar;

b. the goods sold by each party are not related or proximate;

c. the goods sold by each party are offered through different marketing 

channels;

d. consumers of each party’s products exercise a great degree of care when 

selecting a product;

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ANSWER AND COUNTERCLAIMS 9

e. the Stash Tea mark is weak; and

f. there is no evidence of actual confusion.

9. Nor has Stash Cannabis’s use of its mark diluted Stash Tea’s mark under federal 

or state law. Stash Tea is not a famous mark, Stash Commerce is not using Stash Tea’s mark in 

commerce, and Stash Cannabis’s use of the mark is unlikely to cause dilution by blurring or 

tarnishment.

10. Finally, Stash Tea’s claims for unfair competition under state law, which mirror 

its trademark claims, will not prevail for at least the reasons discussed above.

FIRST CLAIM FOR RELIEF-Federal trademark infringement

11. Stash Cannabis repeats paragraphs 1 through 10 here.

12. Because Stash Tea has sued Stash Cannabis under Section 32 of the Lanham Act

and Stash Cannabis has denied liability, there is an actual justiciable controversy between the 

parties on this issue.

13. Stash Cannabis asks the Court to declare that its use of the Stash Cannabis 

trademark does not infringe Stash Tea’s rights under Section 32 of the Lanham Act.

SECOND CLAIM FOR RELIEF-Federal unfair competition/passing off

14. Stash Cannabis repeats paragraphs 1 through 13 here.

15. Because Stash Tea has sued Stash Cannabis under Section 43(a) of the Lanham 

Act and Stash Cannabis has denied liability, there is an actual justiciable controversy between 

the parties on this issue.

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ANSWER AND COUNTERCLAIMS 10

16. Stash Cannabis asks the Court to declare that its use of the Stash Cannabis 

trademark does not infringe Stash Tea’s rights under Section 43(a) of the Lanham Act.

THIRD CLAIM FOR RELIEF-Federal trademark dilution

17. Stash Cannabis repeats paragraphs 1 through 16 here.

18. Because Stash Tea has sued Stash Cannabis for dilution under Section 43(a) of 

the Lanham Act and Stash Cannabis has denied liability, there is an actual justiciable controversy 

between the parties on this issue.

19. Stash Cannabis asks the Court to declare that its use of the Stash Cannabis 

trademark does not infringe Stash Tea’s rights against dilution under Section 43(a) of the 

Lanham Act.

FOURTH CLAIM FOR RELIEF-State trademark dilution

20. Stash Cannabis repeats paragraphs 1 through 19 here.

21. Because Stash Tea has sued Stash Cannabis for dilution under Section ORS 

647.107 and Stash Cannabis has denied liability, there is an actual justiciable controversy 

between the parties on this issue.

22. Stash Cannabis asks the Court to declare that its use of the Stash Cannabis 

trademark does not dilute Stash Tea’s marks under ORS 647.107.

FIFTH CLAIM FOR RELIEF-Common law trademark infringement

23. Stash Cannabis repeats paragraphs 1 through 22 here.

24. Because Stash Tea has sued Stash Cannabis for trademark infringement under the 

common law and Stash Cannabis has denied liability, there is an actual justiciable controversy 

between the parties on this issue.

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ANSWER AND COUNTERCLAIMS 11

25. Stash Cannabis asks the Court to declare that its use of the Stash Cannabis 

trademark does not infringe Stash Tea’s trademark rights under the common law.

SIXTH CLAIM FOR RELIEF-Common law unfair competition

26. Stash Cannabis repeats paragraphs 1 through 25 here.

27. Because Stash Tea has sued Stash Cannabis under the common law of unfair 

competition and Stash Cannabis has denied liability, there is an actual justiciable controversy 

between the parties on this issue.

28. Stash Cannabis asks the Court to declare that its use of the Stash Cannabis 

trademark does not infringe Stash Tea’s rights under the common law of unfair competition.

REQUEST FOR RELIEF

Stash Cannabis respectfully seeks judgment awarding it the following relief:

(a) An order declaring that Stash Cannabis does not infringe Stash Tea’s claimed rights 

against infringement under section 32 of the Lanham Act;

(b) An order declaring that Stash Cannabis does not infringe Stash Tea’s claimed rights 

against infringement or dilution under section 43(a) of the Lanham Act;

(c) An order declaring that Stash Cannabis does not infringe of Stash Tea’s claimed 

rights against dilution under ORS 647.107;

(d) An order declaring that Stash Cannabis does not infringe of Stash Tea’s claimed 

trademark rights under the common law;

(e) An order declaring that Stash Cannabis does not infringe of Stash Tea’s claimed 

rights against unfair competition under the common law;

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ANSWER AND COUNTERCLAIMS 12

(f) An order awarding attorneys’ fees, costs, and expenses incurred in connection with 

this action to Stash Cannabis under applicable law; and

(g) An order awarding such other and further relief as this Court deems just and proper.

Dated September 12, 2016

/s/ John Mansfield

John Mansfield, OSB No. 055390

MansfieldLaw

Attorney for defendants

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