npk response and counterclaims
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8/12/2019 NPK Response and Counterclaims
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Page 1 - NPK, LLCS, OREGON GLOBAL DISTRIBUTION, INC.S, RICHARD
ROWES, RENY TOWNSENDS, AND ORION TANGS ANSWER ANDAFFIRMATIVE DEFENSES TO YETI'S AND HEAGLES SECONDAMENDED COMPLAINT AND COUNTERCLAIMS
Rene E. Rothauge, OSB #903712ReneeRothauge@MHGM.comJeffrey M. Edelson, OSB #880407JeffEdelson@MHGM.comSteffan Alexander, OSB #130258SteffanAlexander@MHGM.comChad M. Colton, OSB #065774
ChadColton@MHGM.comMARKOWITZ, HERBOLD, GLADE& MEHLHAF, P.C.
1211 SW Fifth Avenue, Suite 3000Portland, OR 97204-3730Tel: (503) 295-3085Fax: (503) 323-9105
Attorneys for Defendants NPK, LLC andOregon Global Distribution, Inc.
Robert B. Miller, OSB #960068bobmiller@kilmerlaw.comKILMER VOORHEES & LAURICK PC732 NW 19th AvenuePortland, OR 97209Tel: (503) 224-0055Fax: (503) 222-5290
Attorneys for Defendants Orion Tang,Richard Rowe, and Reny Townsend
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF OREGON
PORTLAND DIVISION
YETI ENTERPRISES INCORPORATED,an Oregon corporation, and ALEXANDER J.HEAGLE
Plaintiffs/Counterclaim-Defendants,
vs.
NPK, LLC, f/k/a N.P.K. DISTRIBUTORS,LLC, an Oregon limited liability company,OREGON GLOBAL DISTRIBUTION,INC., an Oregon corporation, RICHARDROWE, an individual, RENY TOWNSEND,
an individual, and ORION TANG, anindividual,
Defendants/Counterclaim-Plaintiffs.
CV No.: 3:13-cv-01203-ST
NPK, LLCS, OREGON GLOBALDISTRIBUTION, INC.S, RICHARD
ROWES, RENY TOWNSENDS, ANDORION TANGS ANSWER AND
AFFIRMATIVE DEFENSES TO YETISAND HEAGLES SECOND AMENDED
COMPLAINT AND COUNTERCLAIMS
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Page 2 - NPK, LLCS, OREGON GLOBAL DISTRIBUTION, INC.S, RICHARD
ROWES, RENY TOWNSENDS, AND ORION TANGS ANSWER ANDAFFIRMATIVE DEFENSES TO YETI'S AND HEAGLES SECONDAMENDED COMPLAINT AND COUNTERCLAIMS
NPK, LLC, f/k/a N.P.K. DISTRIBUTORS,LLC, an Oregon limited liability company,OREGON GLOBAL DISTRIBUTION,INC., an Oregon corporation, RICHARD
ROWE, an individual, RENY TOWNSEND,an individual, and ORION TANG, anindividual,
Counterclaim-Plaintiffs,
vs.
NICHOLAS JACKSON, an individual;JESSICA LILGA, an individual;FREQ WATER, INC., an Oregon corporation,
Additional Counterclaim-Defendants.
NPK, LLC (NPK), Oregon Global Distribution (OGD), Richard Rowe (Rowe),
Reny Townsend (Townsend), and Orion Tang (Tang), and collectively Defendants,
respond to Yeti Enterprises Incorporateds (Yetis) and Alexander J. Heagles (Heagle)
second amended complaint as follows:
ANSWER
I. PARTIES, JURISDICTION AND VENUE
1. Defendants admit that Yeti is a corporation incorporated under the laws of the
state of Oregon with its principal place of business in Medford, Oregon, and engages in the
business of manufacturing and selling plant washes. Defendants are without knowledge or
information sufficient to form a belief as to the truth of the remaining allegations in paragraph 1
of the second amended complaint, and therefore deny them.
2. Defendants admit the allegations in paragraph 2 of the second amended complaint
for the purpose of jurisdiction only.
3. In response to the allegations in paragraph 3 of the second amended complaint,
defendants admit that NPK is an Oregon limited liability company with its principal place of
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ROWES, RENY TOWNSENDS, AND ORION TANGS ANSWER ANDAFFIRMATIVE DEFENSES TO YETI'S AND HEAGLES SECONDAMENDED COMPLAINT AND COUNTERCLAIMS
business in Medford, Oregon, and sells and distributes horticulture products. Defendants also
admit that Rowe, Townsend, Tang, and Nicholas Jackson (Jackson) co-founded NPK.
Defendants further admit that Rowe is NPKs President, Townsend is NPKs Senior Vice
President, and Tang is NPKs Vice President of Operations. Defendants deny all remaining
allegations in paragraph 3 of the second amended complaint.
4. In response to the allegations in paragraph 4 of the second amended complaint,
defendants admit that OGD is an Oregon corporation with its principal place of business in
Medford, Oregon. Defendants also admit that Rowe, Townsend, and Tang co-founded OGD.
Defendants further admit that Rowe is OGDs President, Townsend is OGDs Senior Vice
President, and Tang is OGDs Vice President of Operations. Defendants deny all remaining
allegations in paragraph 4 of the second amended complaint.
5. In response to the allegations in paragraph 5 of the second amended complaint,
defendants admit that Rowe is a resident of Medford, Oregon. Defendants also admit that Rowe
is a co-founder and the President of NPK and OGD. Defendants deny all remaining allegations
in paragraph 5 of the second amended complaint.
6. In response to the allegations in paragraph 6 of the second amended complaint,
defendants admit that Townsend is a resident of Medford, Oregon. Defendants also admit that
Townsend is a co-founder and the Senior Vice President of NPK and OGD. Defendants deny all
remaining allegations in paragraph 6 of the second amended complaint.
7. In response to the allegations in paragraph 7 of the second amended complaint,
defendants admit that Tang is a resident of Medford, Oregon. Defendants also admit that Tang is
a co-founder and the Vice President of Operations of NPK and OGD. Defendants deny all
remaining allegations in paragraph 7 of the second amended complaint.
8. Defendants deny the allegations in paragraph 8 of the second amended complaint.
9. Defendants admit the allegations in paragraph 9 of the second amended complaint
for the purpose of jurisdiction only.
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10. Defendants admit the allegations in paragraph 10 of the second amended
complaint for the purpose of venue only.
II. GENERAL ALLEGATIONS
11. Defendants are without knowledge or information sufficient to form a belief as to
the truth of the allegations in paragraph 11 of the second amended complaint, and therefore deny
them.
12. Defendants are without knowledge or information sufficient to form a belief as to
the truth of the allegations in paragraph 12 of the second amended complaint, and therefore deny
them.
13. Defendants are without knowledge or information sufficient to form a belief as to
the truth of the allegations in paragraph 13 of the second amended complaint, and therefore deny
them.
14. Defendants are without knowledge or information sufficient to form a belief as to
the truth of the allegations in paragraph 14 of the second amended complaint, and therefore deny
them.
15. In response to the allegations in paragraph 15 of the second amended complaint,
defendants admit that Yeti and NPK entered into a distribution agreement dated November 11,
2010 (the Distribution Agreement), attached as exhibit A to the second amended complaint.
Defendants further state that the Distribution Agreement attached as exhibit A to the second
amended complaint speaks for itself. Defendants deny all remaining allegations in paragraph 15
of the complaint.
16. In response to the allegations in paragraph 16 of the second amended complaint,
defendants admit that a tote is a plastic vessel that contains 260 gallons of liquid. Defendants
further state that the Distribution Agreement speaks for itself. Defendants deny all remaining
allegations in paragraph 16 of the second amended complaint.
17. In response to the allegations in paragraph 17 of the second amended complaint,
defendants state that the Distribution Agreement attached as exhibit A to the second amended
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complaint speaks for itself. Defendants deny all remaining allegations in paragraph 17 of the
second amended complaint.
18. In response to the allegations in paragraph 18 of the second amended complaint,
defendants state that the Distribution Agreement attached as exhibit A to the second amended
complaint speaks for itself. Defendants deny all remaining allegations in paragraph 18 of the
second amended complaint.
19. In response to the allegations in paragraph 19 of the second amended complaint,
defendants admit that pursuant to the Distribution Agreement attached as exhibit A to the second
amended complaint, NPK bottled, labeled, marketed, and physically distributed three plant
washes: Mighty Wash, PM Wash, and Power Wash. Defendants deny all remaining
allegations in paragraph 19 of the second amended complaint.
20. Defendants are without knowledge or information sufficient to form a belief as to
the truth of the allegations in paragraph 20 of the second amended complaint, and therefore deny
them.
21. In response to the allegations in paragraph 21 of the second amended complaint,
defendants admit that NPK and Yeti met in February 2012 to discuss the parties ongoing
business activities. Defendants also admit that in February 2012, Yeti and NPK executed an
agreement titled Yeti Final Proposal, attached as exhibit A-12 to the second amended
complaint. Defendants further state that the Yeti Final Proposal speaks for itself. Defendants
deny all remaining allegations in paragraph 21 of the second amended complaint.
22. In response to the allegations in paragraph 22 of the second amended complaint,
defendants state that the Yeti Final Proposal speaks for itself. Defendants are without
knowledge or information sufficient to form a belief as to the truth of the remaining allegations
in paragraph 22 of the second amended complaint, and therefore deny them.
23. In response to the allegations in paragraph 23 of the second amended complaint,
defendants admit that the U.S. Patent and Trademark Office granted NPK a trademark for
Mighty Wash, U.S. Trademark Registration No. 4,121,193. Defendants further state that
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U.S. Trademark Registration No. 4,121,193 and any associated application materials speak for
themselves. Defendants deny all remaining allegations in paragraph 23 of the second amended
complaint.
24. In response to the allegations in paragraph 24 of the second amended complaint,
defendants admit that the U.S. Patent and Trademark Office granted NPK a trademark for
Mighty Wash, U.S. Trademark Registration No. 4,241,438. Defendants further state that
U.S. Trademark Registration No. 4,241,438 and any associated application materials speak for
themselves. Defendants deny all remaining allegations in paragraph 24 of the second amended
complaint.
25. In response to the allegations in paragraph 25 of the second amended complaint,
defendants admit that on March 29, 2012, the U.S. Environmental Protection Agency (EPA)
issued a Stop Sale, Use, or Removal Order to NPK, which prohibited NPKs sale, use, or
distribution of Mighty Wash, PM Wash, and Power Wash (the Stop Sale Order),
attached as exhibit E to the second amended complaint. Defendants further state that the Stop
Sale Order attached as exhibit E to the second amended complaint speaks for itself. Defendants
deny all remaining allegations in paragraph 25 of the second amended complaint.
26. In response to the allegations in paragraph 26 of the second amended complaint,
defendants admit that on April 9, 2012, NPK emailed EPA regarding the Stop Sale Order.
Defendants further state that the email speaks for itself. Defendants deny all remaining
allegations in paragraph 26 of the second amended complaint.
27. In response to the allegations in paragraph 27 of the second amended complaint,
defendants admit that on April 9, 2012, EPA emailed NPK regarding the Stop Sale Order.
Defendants further state that the email speaks for itself. Defendants deny all remaining
allegations in paragraph 27 of the second amended complaint.
28. In response to the allegations in paragraph 28 of the second amended complaint,
defendants admit that on April 9, 2012, EPA emailed NPK regarding the Stop Sale Order.
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Defendants further state that the email speaks for itself. Defendants deny all remaining
allegations in paragraph 28 of the second amended complaint.
29. In response to the allegations in paragraph 29 of the second amended complaint,
defendants admit that after EPA issued its Stop Sale Order, NPK changed its labels and
advertising for Mighty Wash, PM Wash, and Power Wash. Defendants further state that
the labels and advertising speak for themselves. Defendants also admit that EPA sent NPK a
letter regarding Authorization to Sell and Distribute Mighty Wash, PM Wash, and Power
Wash dated June 21, 2012 (the EPA Authorization Letter). A true and correct copy of EPA
Authorization Letter is attached to NPKs Answer as Exhibit 1. Defendants further state that
EPA Authorization Letter speaks for itself. Defendants deny all remaining allegations in
paragraph 29 of the second amended complaint.
30. In response to the allegations in paragraph 30 of the second amended complaint,
defendants admit that after EPA issued its Stop Sale Order, NPK changed its labels and
advertising for Mighty Wash, PM Wash, and Power Wash. Defendants further state that
the labels and advertising speak for themselves. Defendants also admit that EPA sent NPK an
EPA Authorization Letter dated June 21, 2012, which is attached to NPKs Answer as Exhibit 1.
Defendants further state that EPA Authorization Letter speaks for itself. Defendants deny all
remaining allegations in paragraph 30 of the second amended complaint.
31. In response to the allegations in paragraph 31 of the second amended complaint,
defendants admit that on March 29, 2012, EPA issued a Stop Sale Order, which prohibited
NPKs sale, use, or distribution of Mighty Wash, PM Wash, and Power Wash, attached as
exhibit E to the second amended complaint. Defendants further state that the Stop Sale Order
attached as exhibit E to the second amended complaint speaks for itself. Defendants deny all
remaining allegations in paragraph 31 of the complaint.
32. In response to the allegations in paragraph 32 of the second amended complaint,
defendants admit that NPK applied to the U.S. Patent and Trademark Office for registration of
PM Wash, U.S. Trademark Serial No. 85782754. Defendants further state that U.S.
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Trademark Serial No. 85782754 and any associated application materials speak for themselves.
Defendants deny all remaining allegations in paragraph 32 of the second amended complaint.
33. In response to the allegations in paragraph 33 of the second amended complaint,
defendants admit that the U.S. Patent and Trademark Office granted NPK a trademark for
Power Wash, U.S. Trademark Registration No. 4,346,896. Defendants further state that U.S.
Trademark Registration No. 4,346,896 and any associated application materials speak for
themselves. Defendants deny all remaining allegations in paragraph 33 of the second amended
complaint.
34. Defendants are without knowledge or information sufficient to form a belief as to
the truth of the allegations in paragraph 34 of the second amended complaint, and therefore deny
them.
35. Defendants deny the allegations in paragraph 35 of the second amended
complaint.
36. In response to the allegations in paragraph 36 of the second amended complaint,
defendants admit that on January 2, 2013, Rowe and Tang had a meeting with Heagle.
Defendants also admit that Rowe provide Heagle a copy of EPA Authorization Letter dated
June 21, 2012. Defendants deny all remaining allegations in paragraph 36 of the second
amended complaint.
37. In response to the allegations in paragraph 37 of the second amended complaint,
defendants admit that Stack and Multiply were not Yeti products. Defendants are without
knowledge or information sufficient to form a belief as to the truth of the remaining allegations
in paragraph 37 of the second amended complaint, and therefore deny them.
38. In response to the allegations in paragraph 38 of the second amended complaint,
defendants admit that at the January 2, 2013 meeting between Rowe, Tang, and Heagle, Rowe
and Tang did not have any knowledge of any customers confusing Stack and Multiply with
Yeti. Defendants are without knowledge or information sufficient to form a belief as to the truth
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of the remaining allegations in paragraph 38 of the second amended complaint, and therefore
deny them.
39. In response to the allegations in paragraph 39 of the second amended complaint,
defendants admit that NPK authorized placement of an advertisement titled From the Creators
of Mighty Wash, attached as exhibit D to the second amended complaint, in the December 2012
issue ofMaximum Yieldmagazine. Defendants are without knowledge or information sufficient
to form a belief as to the truth of the remaining allegations in paragraph 39 of the second
amended complaint, and therefore deny them.
40. In response to the allegations in paragraph 40 of the second amended complaint,
defendants admit that in February 2012, Yeti and NPK executed an agreement titled Yeti Final
Proposal, attached as exhibit A-12 to the second amended complaint. Defendants further state
that the Yeti Final Proposal speaks for itself. Defendants deny all remaining allegations in
paragraph 40 of the second amended complaint.
41. In response to the allegations in paragraph 41 of the second amended complaint,
defendants admit that on January 28, 2013, Yeti sent NPK a demand letter. A true and correct
copy of Yetis demand letter is attached to NPKs Answer as Exhibit 2. Defendants further state
that Yetis demand letter speaks for itself. Defendants deny all remaining allegations in
paragraph 41 of the second amended complaint.
42. In response to the allegations in paragraph 42 of the second amended complaint,
defendants admit that the U.S. Patent and Trademark Office granted NPK a trademark for the
Power Button mark U.S. Trademark Registration No. 4,400,010. Defendants further state that
U.S. Trademark Registration No. 4,400,010 and any associated application materials speak for
themselves. Defendants deny all remaining allegations in paragraph 42 of the second amended
complaint.
43. In response to the allegations in paragraph 43 of the second amended complaint,
defendants admit that Yeti and NPK had a meeting on February 11, 2013, and at that meeting
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Yeti and NPK attempted to resolve their pending business disputes. Defendants deny all
remaining allegations in paragraph 43 of the second amended complaint.
44. Defendants are without knowledge or information sufficient to form a belief as to
the truth of the allegations in paragraph 44 of the second amended complaint, and therefore deny
them.
45. In response to the allegations in paragraph 45 of the second amended complaint,
defendants admit that on February 21, 2013, Townsend sent an email with an unsigned
attachment titled Settlement Agreement and Amendment to Distribution Agreement, attached
as exhibit G to the second amended complaint. Defendants further state that the email and its
attachment, attached as exhibit G to the second amended complaint, speak for themselves.
Defendants deny all remaining allegations in paragraph 45 of the second amended complaint.
46. Defendants deny the allegations in paragraph 46 of the second amended
complaint.
47. Defendants deny the allegations in paragraph 47 of the second amended
complaint.
48. Defendants are without knowledge or information sufficient to form a belief as to
the truth of the allegations in paragraph 48 of the second amended complaint, and therefore deny
them.
49. Defendants deny the allegations in paragraph 49 of the second amended
complaint.
50. Defendants deny the allegations in paragraph 50 of the second amended
complaint.
51. Defendants deny the allegations in paragraph 51 of the second amended
complaint.
52. Defendants are without knowledge or information sufficient to form a belief as to
the truth of the allegations in paragraph 52 of the second amended complaint, and therefore deny
them.
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53. Defendants are without knowledge or information sufficient to form a belief as to
the truth of the allegations in paragraph 53 of the second amended complaint, and therefore deny
them.
54. Defendants are without knowledge or information sufficient to form a belief as to
the truth of the allegations in paragraph 54 of the second amended complaint, and therefore deny
them.
55. Defendants are without knowledge or information sufficient to form a belief as to
the truth of the allegations in paragraph 55 of the second amended complaint, and therefore deny
them.
56. Defendants deny the allegations in paragraph 56 of the second amended
complaint.
57. Defendants deny the allegations in paragraph 57 of the second amended
complaint.
58. Defendants deny the allegations in paragraph 58 of the second amended
complaint.
59. Defendants deny the allegations in paragraph 59 of the second amended
complaint.
60. Defendants deny the allegations in paragraph 60 of the second amended
complaint.
61. In response to the allegations in paragraph 61 of the second amended complaint,
defendants deny that NPK uses Yetis Marks as defined by Yeti. Defendants further deny the
remaining allegations in paragraph 61 of the second amended complaint.
62. In response to the allegations in paragraph 62 of the second amended complaint,
defendants admit that NPK filed a complaint for tortious interference with contractual relations
against Yeti in Jackson County Circuit Court, Case No. 13CV01641, later stipulated to a
voluntarily dismissal without prejudice, and the Distribution Agreement attached as exhibit A to
the second amended complaint contains an exclusive venue provision for Multnomah County.
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Defendants further state they are without knowledge or information sufficient to form a belief as
to the truth of the remaining allegations in paragraph 62 of the second amended complaint, and
therefore deny them.
III.
CLAIMS FOR RELIEF
FIRST CLAIM FOR RELIEF
(By Yeti Against All Defendants)
Trademark Infringement and Unfair Competition 15 U.S.C. 1125(a)
63. In response to the allegations in paragraph 63 of the second amended complaint,
defendants incorporate by reference each and every response set forth above.
64. Defendants deny the allegations in paragraph 64 of the second amended
complaint.
65. Defendants deny the allegations in paragraph 65 of the second amended
complaint.
66. In response to the allegations in paragraph 66 of the second amended complaint,
defendants deny that NPK used Yetis Marks as defined by Yeti. Defendants are without
knowledge or information sufficient to form a belief as to the truth of the remaining allegations
in paragraph 66 of the second amended complaint, and therefore deny them.
67. Defendants deny the allegations in paragraph 67 of the second amended
complaint.
68. Defendants deny the allegations in paragraph 68 of the second amended
complaint.
69. Defendants deny the allegations in paragraph 69 of the second amended
complaint.
70. Defendants deny the allegations in paragraph 70 of the second amended
complaint.
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71. Defendants deny the allegations in paragraph 71 of the second amended
complaint.
72. Defendants deny the allegations in paragraph 72 of the second amended
complaint.
73. Defendants deny the allegations in paragraph 73 of the second amended
complaint.
SECOND CLAIM FOR RELIEF
(By Yeti Against All Defendants)
False Advertising 15 U.S.C. 1125(a)
74. In response to the allegations in paragraph 74 of the second amended complaint,
defendants incorporate by reference each and every response set forth above.
75. Defendants deny the allegations in paragraph 75 of the second amended
complaint.
76. Defendants deny the allegations in paragraph 76 of the second amended
complaint.
77. Defendants deny the allegations in paragraph 77 of the second amended
complaint.
78. Defendants deny the allegations in paragraph 78 of the second amended
complaint.
79. Defendants deny the allegations in paragraph 79 of the second amended
complaint.
80. Defendants deny the allegations in paragraph 80 of the second amended
complaint.
81. Defendants deny the allegations in paragraph 81 of the second amended
complaint.
82. Defendants deny the allegations in paragraph 82 of the second amended
complaint.
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83. Defendants deny the allegations in paragraph 83 of the second amended
complaint.
84. Defendants deny the allegations in paragraph 84 of the second amended
complaint.THIRD CLAIM FOR RELIEF
(By Yeti Against All Defendants)
Common Law Infringement and Unfair Competition
85. In response to the allegations in paragraph 85 of the second amended complaint,
defendants incorporate by reference each and every response set forth above.
86. In response to the allegations in paragraph 86 of the second amended complaint,
defendants deny that NPK unlawfully used any marks owned by Yeti. Defendants are without
knowledge or information sufficient to form a belief as to the truth of the remaining allegations
contained in paragraph 86 of the second amended complaint, and therefore deny them.
87. In response to the allegations in paragraph 87 of the second amended complaint,
defendants deny that NPK misappropriated any marks owned by Yeti. Defendants are without
knowledge or information sufficient to form a belief as to the truth of the remaining allegations
contained in paragraph 86 of the second amended complaint, and therefore deny them.
88. Defendants deny the allegations in paragraph 88 of the second amended
complaint.
89. Defendants deny the allegations in paragraph 89 of the second amended
complaint.
90. Defendants deny the allegations in paragraph 90 of the second amended
complaint.
91. Defendants deny the allegations in paragraph 91 of the second amended
complaint.
92. Defendants deny the allegations in paragraph 92 of the second amended
complaint.
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FOURTH CLAIM FOR RELIEF
(By Yeti NPK, Rowe, Townsend and Tang)
(Fraud Federal Trademark Registration)
(Count 1)
93. In response to the allegations in paragraph 93 of the second amended complaint,
defendants incorporate by reference each and every response set forth above.
94. Defendants deny the allegations in paragraph 94 of the second amended
complaint.
95. Defendants deny the allegations in paragraph 95 of the second amended
complaint.
96. Defendants are without knowledge or information sufficient to form a belief as to
the truth of the allegations in paragraph 96 of the second amended complaint, and therefore deny
them.
97. Defendants deny the allegations in paragraph 97 of the second amended
complaint.
98. Defendants deny the allegations in paragraph 98 of the second amended
complaint.
(Count 2)
99. In response to the allegations in paragraph 99 of the second amended complaint,
defendants incorporate by reference each and every response set forth above.
100. Defendants deny the allegations in paragraph 100 of the second amended
complaint.
101. Defendants deny the allegations in paragraph 101 of the second amended
complaint.
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102. Defendants are without knowledge or information sufficient to form a belief as to
the truth of the allegations in paragraph 102 of the second amended complaint, and therefore
deny them.
103. Defendants deny the allegations in paragraph 103 of the second amended
complaint.
104. Defendants deny the allegations in paragraph 104 of the second amended
complaint.
(Count 3)
105. In response to the allegations in paragraph 105 of the second amended complaint,
defendants incorporate by reference each and every response set forth above.
106. Defendants deny the allegations in paragraph 106 of the second amended
complaint.
107. Defendants deny the allegations in paragraph 107 of the second amended
complaint.
108. Defendants are without knowledge or information sufficient to form a belief as to
the truth of the allegations in paragraph 108 of the second amended complaint, and therefore
deny them.
109. Defendants deny the allegations in paragraph 109 of the second amended
complaint.
110. Defendants deny the allegations in paragraph 110 of the second amended
complaint.
(Count 4)
111. In response to the allegations in paragraph 111 of the second amended complaint,
defendants incorporate by reference each and every response set forth above.
112. Defendants deny the allegations in paragraph 112 of the second amended
complaint.
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113. Defendants deny the allegations in paragraph 113 of the second amended
complaint.
114. Defendants are without knowledge or information sufficient to form a belief as to
the truth of the allegations in paragraph 114 of the second amended complaint, and therefore
deny them.
115. Defendants deny the allegations in paragraph 115 of the second amended
complaint.
116. Defendants deny the allegations in paragraph 116 of the second amended
complaint.
FIFTH CLAIM FOR RELIEF
(By Yeti Against NPK, Rowe, Townsend and Tang)
(Common Law Fraud)
117. In response to the allegations in paragraph 117 of the second amended complaint,
defendants incorporate by reference each and every response set forth above.
118. In response to the allegations in paragraph 118 of the second amended complaint,
defendants admit that on March 29, 2012, EPA issued a Stop Sale Order to NPK, which
prohibited NPKs sale, use, or distribution of Mighty Wash, PM Wash, and Power Wash.
Defendants deny the remaining allegations in paragraph 118 of the second amended complaint.
119. Defendants deny the allegations in paragraph 119 of the second amended
complaint.
120. Defendants deny the allegations in paragraph 120 of the second amended
complaint.
121. Defendants deny the allegations in paragraph 121 of the second amended
complaint.
122. Defendants deny the allegations in paragraph 122 of the second amended
complaint.
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SIXTH CLAIM FOR RELIEF
(By Yeti Against NPK)
(Breach of Contract)
(Count 1)
123. In response to the allegations in paragraph 123 of the second amended complaint,
defendants incorporate by reference each and every response set forth above.
124. In response to the allegations in paragraph 124 of the second amended complaint,
defendants admit that Yeti and NPK executed a Distribution Agreement dated November 11,
2010, attached as exhibit A to the second amended complaint. Defendants further state that the
Distribution Agreement attached as exhibit A to the second amended complaint speaks for itself.
Defendants deny all remaining allegations in paragraph 124 of the second amended complaint.
125. Defendants deny the allegations in paragraph 125 of the second amended
complaint.
126. Defendants deny the allegations in paragraph 126 of the second amended
complaint.
127. Defendants deny the allegations in paragraph 127 of the second amended
complaint.
128. Defendants deny the allegations in paragraph 128 of the second amended
complaint.
(Count 2)
129. In response to the allegations in paragraph 129 of the second amended complaint,
defendants incorporate by reference each and every response set forth above.
130. In response to the allegations in paragraph 130 of the second amended complaint,
defendants admit that Yeti and NPK executed a Distribution Agreement dated November 11,
2010, attached as exhibit A to the second amended complaint. Defendants further state that the
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Distribution Agreement attached as exhibit A to the second amended complaint speaks for itself.
Defendants deny all remaining allegations in paragraph 130 of the second amended complaint.
131. Defendants deny the allegations in paragraph 131 of the second amended
complaint.
132. Defendants deny the allegations in paragraph 132 of the second amended
complaint.
133. Defendants deny the allegations in paragraph 133 of the second amended
complaint.
134. Defendants deny the allegations in paragraph 134 of the second amended
complaint.
(Count 3)
135. In response to the allegations in paragraph 135 of the second amended complaint,
defendants incorporate by reference each and every response set forth above.
136. In response to the allegations in paragraph 136 of the second amended complaint,
defendants admit that Yeti and NPK executed a Distribution Agreement dated November 11,
2010, attached as exhibit A to the second amended complaint. Defendants further state that the
Distribution Agreement attached as exhibit A to the second amended complaint speaks for itself.
Defendants deny all remaining allegations in paragraph 136 of the second amended complaint.
137. Defendants deny the allegations in paragraph 137 of the second amended
complaint.
138. Defendants deny the allegations in paragraph 138 of the second amended
complaint.
139. Defendants deny the allegations in paragraph 139 of the second amended
complaint.
140. Defendants deny the allegations in paragraph 140 of the second amended
complaint.
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(Count 4)
141. In response to the allegations in paragraph 141 of the second amended complaint,
defendants incorporate by reference each and every response set forth above.
142. In response to the allegations in paragraph 142 of the second amended complaint,
defendants admit that Yeti and NPK executed a Distribution Agreement dated November 11,
2010, attached as exhibit A to the second amended complaint. Defendants further state that the
Distribution Agreement attached as exhibit A to the second amended complaint speaks for itself.
Defendants deny all remaining allegations in paragraph 142 of the second amended complaint.
143. Defendants deny the allegations in paragraph 143 of the second amended
complaint.
144. Defendants deny the allegations in paragraph 144 of the second amended
complaint.
145. Defendants deny the allegations in paragraph 145 of the second amended
complaint.
146. Defendants deny the allegations in paragraph 146 of the second amended
complaint.
(Count 5)
(in the Alternative)
147. In response to the allegations in paragraph 147 of the second amended complaint,
defendants incorporate by reference each and every response set forth above.
148. In response to the allegations in paragraph 148 of the second amended complaint,
defendants admit that Yeti and NPK had a meeting on February 11, 2013, and at that meeting,
Yeti and NPK attempted to resolve their pending business disputes. Defendants deny all
remaining allegations in paragraph 148 of the second amended complaint.
149. Defendants deny the allegations in paragraph 149 of the second amended
complaint.
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150. Defendants deny the allegations in paragraph 150 of the second amended
complaint.
151. Defendants deny the allegations in paragraph 151 of the second amended
complaint.
152. Defendants deny the allegations in paragraph 152 of the second amended
complaint.
153. Defendants deny the allegations in paragraph 153 of the second amended
complaint.
(Count 6)
(in the Alternative)
154. In response to the allegations in paragraph 154 of the second amended complaint,
defendants incorporate by reference each and every response set forth above.
155. Defendants deny the allegations in paragraph 155 of the second amended
complaint.
156. Defendants deny the allegations in paragraph 156 of the second amended
complaint.
157. Defendants deny the allegations in paragraph 157 of the second amended
complaint.
158. Defendants deny the allegations in paragraph 158 of the second amended
complaint.
159. Defendants deny the allegations in paragraph 159 of the second amended
complaint.
160. Defendants deny the allegations in paragraph 160 of the second amended
complaint.
161. Defendants deny the allegations in paragraph 161 of the second amended
complaint.
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(Count 7)
(in the Alternative)
162. In response to the allegations in paragraph 162 of the second amended complaint,
defendants incorporate by reference each and every response set forth above.
163. Defendants deny the allegations in paragraph 163 of the second amended
complaint.
164. Defendants deny the allegations in paragraph 164 of the second amended
complaint.
165. Defendants deny the allegations in paragraph 165 of the second amended
complaint.
166. Defendants deny the allegations in paragraph 166 of the second amended
complaint.
167. Defendants deny the allegations in paragraph 167 of the second amended
complaint.
(Count 8)
(in the Alternative)
168. In response to the allegations in paragraph 168 of the second amended complaint,
defendants incorporate by reference each and every response set forth above.
169. Defendants deny the allegations in paragraph 169 of the second amended
complaint.
170. Defendants deny the allegations in paragraph 170 of the second amended
complaint.
171. Defendants deny the allegations in paragraph 171 of the second amended
complaint.
172. Defendants deny the allegations in paragraph 172 of the second amended
complaint.
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173. Defendants deny the allegations in paragraph 173 of the second amended
complaint.
174. Defendants deny the allegations in paragraph 174 of the second amended
complaint.(Count 9)
(in the Alternative)
175. In response to the allegations in paragraph 175 of the second amended complaint,
defendants incorporate by reference each and every response set forth above.
176. Defendants deny the allegations in paragraph 176 of the second amended
complaint.
177. Defendants deny the allegations in paragraph 177 of the second amended
complaint.
178. Defendants deny the allegations in paragraph 178 of the second amended
complaint.
179. Defendants deny the allegations in paragraph 179 of the second amended
complaint.
180. Defendants deny the allegations in paragraph 180 of the second amended
complaint.
181. Defendants deny the allegations in paragraph 181 of the second amended
complaint.
(Count 10)
(in the Alternative)
182. In response to the allegations in paragraph 182 of the second amended complaint,
defendants incorporate by reference each and every response set forth above.
183. Defendants deny the allegations in paragraph 183 of the second amended
complaint.
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184. Defendants deny the allegations in paragraph 184 of the second amended
complaint.
185. Defendants deny the allegations in paragraph 185 of the second amended
complaint.
186. Defendants deny the allegations in paragraph 186 of the second amended
complaint.
187. Defendants deny the allegations in paragraph 187 of the second amended
complaint.
188. Defendants deny the allegations in paragraph 188 of the second amended
complaint.
189. Defendants deny the allegations in paragraph 189 of the second amended
complaint.
SEVENTH CLAIM FOR RELIEF
(By Yeti Against NPK)
(Breach of Implied Covenant of Good Faith and Fair Dealing)
190. In response to the allegations in paragraph 190 of the second amended complaint,
defendants incorporate by reference each and every response set forth above.
191. In response to the allegations in paragraph 191 of the second amended complaint,
defendants admit that Yeti and NPK executed a Distribution Agreement dated November 11,
2010, attached as exhibit A to the second amended complaint. Defendants further state that the
Distribution Agreement attached as exhibit A to the second amended complaint speaks for itself.
Defendants deny all remaining allegations in paragraph 191 of the complaint.
192. Defendants deny the allegations in paragraph 192 of the second amended
complaint.
193. In response to the allegations in paragraph 193 of the second amended complaint,
defendants admit that Yeti and NPK executed a Distribution Agreement dated November 11,
2010, attached as exhibit A to the second amended complaint. Defendants further state that the
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Distribution Agreement attached as exhibit A to the complaint speaks for itself. Defendants
deny all remaining allegations in paragraph 193 of the second amended complaint.
194. Defendants deny the allegations in paragraph 194 of the second amended
complaint.
195. Defendants deny the allegations in paragraph 195 of the second amended
complaint.
196. Defendants deny the allegations in paragraph 196 of the second amended
complaint.
EIGHTH CLAIM FOR RELIEF
(By Yeti Against NPK)
(Declaratory Judgment ORS Chapter 28)
197. In response to the allegations in paragraph 197 of the second amended complaint,
defendants incorporate by reference each and every response set forth above.
198. Defendants admit that there is a controversy between the parties. Defendants
deny all remaining allegations contained in paragraph 198 of the second amended complaint.
199. Defendants admit the allegations in paragraph 199 of the second amended
complaint for the purpose of venue only.
200. Defendants deny the allegations in paragraph 200 of the second amended
complaint.
NINTH CLAIM FOR RELIEF
(By Yeti Against All Defendants)
Cybersquatting 15 U.S.C. 1125(d)
201. In response to the allegations in paragraph 201 of the second amended complaint,
defendants incorporate by reference each and every response set forth above.
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202. Defendants are without knowledge or information sufficient to form a belief as to
the truth of the allegations in paragraph 202 of the second amended complaint, and therefore
deny them.
203. Defendants deny the allegations in paragraph 203 of the second amended
complaint.
204. Defendants deny the allegations in paragraph 204 of the second amended
complaint.
205. Defendants deny the allegations in paragraph 205 of the second amended
complaint.
206. Defendants deny the allegations in paragraph 206 of the second amended
complaint.
207. In response to the allegations in paragraph 207 of the second amended complaint,
defendants admit that the 40 internet domain names listed in paragraph 204 of the second
amended complaint do not contain the legal name of any defendant. Defendants deny all
remaining allegations in paragraph 207 of the second amended complaint.
208. Defendants deny the allegations in paragraph 208 of the second amended
complaint.
209. Defendants are without knowledge or information sufficient to form a belief as to
the truth of the allegations in paragraph 209 of the second amended complaint, and therefore
deny them.
210. Defendants deny the allegations in paragraph 210 of the second amended
complaint.
211. Defendants deny the allegations in paragraph 211 of the second amended
complaint.
212. Defendants deny the allegations in paragraph 212 of the second amended
complaint.
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213. Defendants deny the allegations in paragraph 213 of the second amended
complaint.
214. Defendants deny the allegations in paragraph 214 of the second amended
complaint.
215. Defendants deny the allegations in paragraph 215 of the second amended
complaint.
216. Defendants deny the allegations in paragraph 216 of the second amended
complaint.
217. Defendants deny the allegations in paragraph 217 of the second amended
complaint.
218. Defendants deny the allegations in paragraph 218 of the second amended
complaint.
219. Defendants deny the allegations in paragraph 219 of the second amended
complaint.
220. Defendants deny the allegations in paragraph 220 of the second amended
complaint.
221. Defendants deny the allegations in paragraph 221 of the second amended
complaint.
222. Defendants deny the allegations in paragraph 222 of the second amended
complaint.
TENTH CLAIM FOR RELIEF
(By Yeti Against NPK)
Declaratory Judgment of Non-infringement
223. In response to the allegations in paragraph 223 of the second amended complaint,
defendants incorporate by reference each and every response set forth above.
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224. In response to the allegations in paragraph 224 of the second amended complaint,
defendants admit that there is a controversy between the parties. Defendants deny all remaining
allegations in paragraph 224 of the second amended complaint.
225. In response to the allegations in paragraph 225 of the second amended complaint,
defendants admit that there is a controversy between the parties. Defendants deny all remaining
allegations in paragraph 225 of the second amended complaint.
226. In response to the allegations in paragraph 226 of the second amended complaint,
defendants state that the allegations in count II of the thirteenth claim for relief of defendants
amended counterclaims speak for themselves. Defendants deny all remaining allegations in
paragraph 226 of the second amended complaint.
227. In response to the allegations in paragraph 227 of the second amended complaint,
defendants state that the allegations in count II of the thirteenth claim for relief of defendants
amended counterclaims speak for themselves. Defendants deny all remaining allegations in
paragraph 227 of the second amended complaint.
228. Defendants deny the allegations in paragraph 228 of the second amended
complaint.
229. Defendants deny the allegations in paragraph 229 of the second amended
complaint.
230. Defendants are without knowledge or information sufficient to form a belief as to
the truth of the allegations in paragraph 230 of the second amended complaint, and therefore
deny them.
231. Defendants deny the allegations in paragraph 231 of the second amended
complaint.
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ELEVENTH CLAIM FOR RELIEF
(By Yeti Against NPK)
Declaratory Judgment of Invalidity of Federal Trademark Registration
(Count 1 U.S. Reg. No. 4,121,193)
232. In response to the allegations in paragraph 232 of the second amended complaint,
defendants incorporate by reference each and every response set forth above.
233. In response to the allegations in paragraph 233 of the second amended complaint,
defendants admit that the U.S. Patent and Trademark Office granted NPK a trademark for
Mighty Wash, U.S. Trademark Registration No. 4,121,193. Defendants further state that
U.S. Trademark Registration No. 4,121,193 and any associated application materials speak for
themselves. Defendants deny all remaining allegations in paragraph 232 of the second amended
complaint.
234. Defendants deny the allegations in paragraph 234 of the second amended
complaint.
235. Defendants deny the allegations in paragraph 235 of the second amended
complaint.
236. In response to the allegations in paragraph 236 of the second amended complaint,
defendants admit that the U.S. Patent and Trademark Office granted NPK a trademark for
Mighty Wash, U.S. Trademark Registration No. 4,121,193. Defendants further state that
U.S. Trademark Registration No. 4,121,193 and any associated application materials speak for
themselves. Defendants deny all remaining allegations in paragraph 236 of the second amended
complaint.
237. Defendants deny the allegations in paragraph 237 of the second amended
complaint.
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(Count 2 U.S. Reg. No. 4,241,438)
238. In response to the allegations in paragraph 238 of the second amended complaint,
defendants incorporate by reference each and every response set forth above.
239. In response to the allegations in paragraph 239 of the second amended complaint,
defendants admit that the U.S. Patent and Trademark Office granted NPK a trademark for
Mighty Wash, U.S. Trademark Registration No. 4,241,438. Defendants further state that
U.S. Trademark Registration No. 4,241,438 and any associated application materials speak for
themselves. Defendants deny all remaining allegations in paragraph 239 of the second amended
complaint.
240. Defendants deny the allegations in paragraph 240 of the second amended
complaint.
241. Defendants deny the allegations in paragraph 241 of the second amended
complaint.
242. In response to the allegations in paragraph 242 of the second amended complaint,
defendants admit that the U.S. Patent and Trademark Office granted NPK a trademark for
Mighty Wash, U.S. Trademark Registration No. 4,241,438. Defendants further state that
U.S. Trademark Registration No. 4,241,438 and any associated application materials speak for
themselves. Defendants deny all remaining allegations in paragraph 242 of the second amended
complaint.
243. Defendants deny the allegations in paragraph 243 of the second amended
complaint.
(Count 3 U.S. Reg. No. 4,346,896)
244. In response to the allegations in paragraph 244 of the second amended complaint,
defendants incorporate by reference each and every response set forth above.
245. In response to the allegations in paragraph 245 of the second amended complaint,
defendants admit that the U.S. Patent and Trademark Office granted NPK a trademark for
Power Wash, U.S. Trademark Registration No. 4,346,896. Defendants further state that
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U.S. Trademark Registration No. 4,346,896 and any associated application materials speak for
themselves. Defendants deny all remaining allegations in paragraph 245 of the second amended
complaint.
246. Defendants deny the allegations in paragraph 246 of the second amended
complaint.
247. Defendants deny the allegations in paragraph 247 of the second amended
complaint.
248. In response to the allegations in paragraph 248 of the second amended complaint,
defendants admit that the U.S. Patent and Trademark Office granted NPK a trademark for
Power Wash, U.S. Trademark Registration No. 4,346,896. Defendants further state that
U.S. Trademark Registration No. 4,346,896 and any associated application materials speak for
themselves. Defendants deny all remaining allegations in paragraph 248 of the second amended
complaint.
249. Defendants deny the allegations in paragraph 249 of the second amended
complaint.
(Count 4 U.S. Reg. No. 4,400,010)
250. In response to the allegations in paragraph 250 of the second amended complaint,
defendants incorporate by reference each and every response set forth above.
251. In response to the allegations in paragraph 251 of the second amended complaint,
defendants admit that the U.S. Patent and Trademark Office granted NPK a trademark for
Power Button mark U.S. Trademark Registration No. 4,400,010. Defendants further state that
U.S. Trademark Registration No. 4,400,010 and any associated application materials speak for
themselves. Defendants deny all remaining allegations in paragraph 251 of the second amended
complaint.
252. Defendants deny the allegations in paragraph 252 of the second amended
complaint.
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253. Defendants deny the allegations in paragraph 253 of the second amended
complaint.
254. In response to the allegations in paragraph 254 of the second amended complaint,
defendants admit that the U.S. Patent and Trademark Office granted NPK a trademark for
Power Button mark U.S. Trademark Registration No. 4,400,010. Defendants further state that
U.S. Trademark Registration No. 4,400,010 and any associated application materials speak for
themselves. Defendants deny all remaining allegations in paragraph 254 of the second amended
complaint.
255. Defendants deny the allegations in paragraph 255 of the second amended
complaint.
TWELFTH CLAIM FOR RELIEF
(By Yeti and Heagle Against NPK, Rowe and Tang)
Breach of Confidentiality and Non-Disclosure Contract
256. In response to the allegations in paragraph 256 of the second amended complaint,
defendants incorporate by reference each and every response set forth above.
257. In response to the allegations in paragraph 257 of the second amended complaint,
defendants admit that Heagle and Rowe executed a confidentiality contract dated September 9,
2010. Defendants also admit that Heagle and Tang executed a confidentiality contract dated
September 9, 2010. Defendants further admit that Yeti and NPK executed a confidentiality
agreement dated January 8, 2013. Defendants further state that the confidentiality contracts and
the confidentiality agreement speak for themselves. Defendants deny all remaining allegations
in paragraph 257 of the second amended complaint.
258. In response to the allegations in paragraph 258 of the second amended complaint,
defendants admit that Heagle and Rowe executed a confidentiality contract dated September 9,
2010. Defendants also admit that Heagle and Tang executed a confidentiality contract dated
September 9, 2010. Defendants further admit that Yeti and NPK executed a confidentiality
agreement dated January 8, 2013. Defendants further state that the confidentiality contracts and
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the confidentiality agreement speak for themselves. Defendants deny all remaining allegations
in paragraph 258 of the second amended complaint.
259. Defendants deny the allegations in paragraph 259 of the second amended
complaint.
260. Defendants deny the allegations in paragraph 260 of the second amended
complaint.
261. Defendants deny the allegations in paragraph 261 of the second amended
complaint.
262. Defendants deny the allegations in paragraph 262 of the second amended
complaint.
263. Defendants deny the allegations in paragraph 263 of the second amended
complaint.
THIRTEENTH CLAIM FOR RELIEF
(By Yeti and Heagle Against All Defendants)
Misappropriation of Trade Secrets ORS 646.461
264. In response to the allegations in paragraph 264 of the second amended complaint,
defendants incorporate by reference each and every response set forth above.
265. Defendants deny the allegations in paragraph 265 of the second amended
complaint.
266. Defendants deny the allegations in paragraph 266 of the second amended
complaint.
267. Defendants deny the allegations in paragraph 267 of the second amended
complaint.
268. Defendants deny the allegations in paragraph 268 of the second amended
complaint.
269. Defendants deny the allegations in paragraph 269 of the second amended
complaint.
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270. Defendants deny the allegations in paragraph 270 of the second amended
complaint.
271. Defendants deny the allegations in paragraph 271 of the second amended
complaint.
272. Defendants deny the allegations in paragraph 272 of the second amended
complaint.
273. Defendants deny the allegations in paragraph 273 of the second amended
complaint.
274. Defendants deny the allegations in paragraph 274 of the second amended
complaint.
275. Defendants deny the allegations in paragraph 275 of the second amended
complaint.
276. Except as specifically admitted, defendants deny each and every allegation in the
second amended complaint.
AFFIRMATIVE AND ADDITIONAL DEFENSES
277. Defendants assert the following affirmative defenses, without assuming any
burden that would otherwise rest with plaintiff.
FIRST AFFIRMATIVE DEFENSE
(Failure to State a Claim)
278. Plaintiffs first amended complaint and the purported causes of action set forth
therein fail to state a claim against defendants upon which relief can be granted.
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SECOND AFFIRMATIVE DEFENSE
(Failure to Allege Fraud with Particularity)
279. Some or all of plaintiffs claims fail to allege fraud with particularity.
THIRD AFFIRMATIVE DEFENSE(Laches)
280. Some or all of plaintiffs claims are barred by the doctrine of laches. Plaintiff
waited an unreasonable length of time to bring its trademark infringement claims. Plaintiff was
aware that NPK continuously used the trademarks for Mighty Wash, PM Wash, Power
Wash, the Power Button, and the Frequency Logo (NPKs Marks) for more than two
years. Plaintiff failed to inform NPK of, or enforce, its purported ownership of NPKs Marks.
Plaintiffs delay in bringing its trademark claims prejudiced NPK because of its substantial
investment in promotion and advertising of NPKs Marks.
FOURTH AFFIRMATIVE DEFENSE(Estoppel, Waiver, and Acquiescence)
281. Some or all of plaintiffs claims are barred by the doctrines of estoppel, waiver,
and acquiescence. NPKs Marks had been in open, continuous, and extensive use by NPK for
more than two years prior to the filing of the first amended complaint, to the knowledge of
plaintiff, with no attempt on plaintiffs part to obtain a judicial determination of its alleged rights
with respect to NPKs use of its marks. NPK has relied to its detriment upon plaintiffs
acquiescence and delay, continued use of its marks, and invested substantial sums in promotion
and advertising of said marks. For these reasons, plaintiff is estopped to allege that any acts of
defendants now constitute an infringement of plaintiffs alleged trademark rights.
FIFTH AFFIRMATIVE DEFENSE
(Abandonment)
282. Some or all of plaintiffs claims are barred because plaintiff has abandoned rights
in the marks by either discontinuing its use of the marks with express or implied intent not to
continue use, or failing to exercise adequate quality control over the goods sold under the
trademarks.
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SIXTH AFFIRMATIVE DEFENSE
(Plaintiff is Not the True Owner of the Marks)
283. Some or all of plaintiffs claims are barred because plaintiff is not the true owner
of NPKs Marks by virtue of either NPK being the first to use its marks in the marketplace,
consumers associating NPKs Marks with NPK, NPKs registration of the Mighty Wash,
Power Wash, and Power Button marks with the U.S. Patent and Trademark Office, or
agreement between NPK and Yeti.
SEVENTH AFFIRMATIVE DEFENSE
(Continuous Prior Use)
284. Some or all of plaintiffs claims are barred by the doctrine of continuous prior
use.
EIGHTH AFFIRMATIVE DEFENSE
(Good Faith)
285. Some or all of plaintiffs state law claims are barred by the doctrine of good faith.
NINTH AFFIRMATIVE DEFENSE
(Unclean Hands)
286. Some or all of plaintiffs claims are barred by the doctrine of unclean hands
because plaintiff engaged in conduct including, but not limited to, committing or conspiring to
commit tortious conduct against defendants, knowingly filing an application for registration of
the mark That Stuff Mighty Wash with the U.S. Patent and Trademark Office, Serial No.
85806351, after NPK already registered its marks for Mighty Wash, refusing to supply NPK
with plant washes and adding obligations to NPK that the parties never agreed to or bargained
for in order for Yeti to supply NPK with plant washes pursuant to the Yeti-NPK 10-year
Distribution Agreement and its amendments.
TENTH AFFIRMATIVE DEFENSE
(Statute of Limitations)
287. Some or all of plaintiffs claims are barred by statute of limitations.
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ELEVENTH AFFIRMATIVE DEFENSE
(Repudiation)
288. Some or all of plaintiffs claims are barred because plaintiff repudiated the
Distribution Agreement and its amendments, the purported February 11 Agreement, and/or any
purported confidentiality contracts or agreements.
TWELFTH AFFIRMATIVE DEFENSE
(Payment)
289. Some or all of plaintiffs claims are barred by the doctrine of payment.
THIRTEENTH AFFIRMATIVE DEFENSE
(Accord and Satisfaction)
290. Some or all of plaintiffs claims are barred by the doctrine of accord and
satisfaction.
FOURTEENTH AFFIRMATIVE DEFENSE
(Waiver)
291. Some or all of plaintiffs contract-related claims are barred by the doctrine of
waiver.
FIFTEENTH AFFIRMATIVE DEFENSE
(Fraudulent Inducement)
292. Some or all of plaintiffs contract-related claims are barred because of plaintiffs
fraudulent inducement.
SIXTEENTH AFFIRMATIVE DEFENSE
(Ambiguity)
293. Some or all of plaintiffs contract-related claims are barred because any purported
contract terms were too ambiguous for the contract to be enforceable.
SEVENTEENTH AFFIRMATIVE DEFENSE(Mistake)
294. Some or all of plaintiffs claims are barred by the doctrine of mistake.
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EIGHTEENTH AFFIRMATIVE DEFENSE
(Commercial Impossibility or Impracticability)
295. Some or all of plaintiffs claims are barred by the doctrine of commercial
impossibility or impracticability.
NINETEENTH AFFIRMATIVE DEFENSE
(Unconscionable Contract or Terms)
296. Some or all of plaintiffs claims are barred because of an unconscionable contract
or unconscionable contract terms.
TWENTIETH AFFIRMATIVE DEFENSE
(Failure of Consideration)
297. Some or all of plaintiffs claims are barred by the doctrine of failure of
consideration because plaintiff refused to supply contractual goods to NPK.
TWENTY-FIRST AFFIRMATIVE DEFENSE
(Immaterial Breach)
298. Some or all of plaintiffs claims are barred because any alleged breach of contract
was an immaterial breach.
TWENTY-SECOND AFFIRMATIVE DEFENSE
(Sufficiency of Notice)
299. Some or all of plaintiffs claims are barred because of insufficient notice of any
alleged violations or breaches.
TWENTY-THIRD AFFIRMATIVE DEFENSE
(Failure to Mitigate)
300. Some or all of plaintiffs claims are barred because plaintiff failed to mitigate its
damages.
TWENTY-FOURTH AFFIRMATIVE DEFENSE(Fair Use)
301. Some or all of plaintiffs claims are barred by the doctrine of fair use.
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TWENTY-FIFTH AFFIRMATIVE DEFENSE
(Reasonable Belief)
302. Some or all of plaintiffs claims are barred because defendants believed and had
reasonable grounds to believe that any alleged use of a domain name was a fair use or otherwise
lawful.
TWENTY-SIXTH AFFIRMATIVE DEFENSE
(Preemption)
303. Some or all of plaintiffs claims are barred by the doctrine of preemption.
TWENTY-SEVENTH AFFIRMATIVE DEFENSE
(Contributory or Comparative Fault)
304. Some or all of plaintiffs claims are barred by the doctrines of contributory of
comparative fault.
TWENTY-EIGHTH AFFIRMATIVE DEFENSE
(Additional Defenses)
305. Defendants may have additional defenses that cannot now be articulated due to
the generality of plaintiffs pleadings and the fact that discovery is ongoing. Accordingly,
defendants expressly reserve the right to supplement the foregoing and to plead any and all
additional defenses available under the law.
DEMAND FOR JURY TRIAL
306. Defendants demand a jury trial in this action.
WHEREFORE, having fully answered plaintiffs second amended complaint and having
asserted affirmative and additional defenses, defendants respectfully pray for judgment as
follows:
A. That plaintiffs claims against defendants be dismissed in their entirety and with
prejudice;
B. That plaintiffs take nothing;
C. That the Court enter judgment in defendants favor;
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D. That defendants recover reasonable attorney fees, expenses, and costs; and
E. For any other just relief.
COUNTERCLAIM
NPK, Rowe, Townsend, and Tang (collectively Counterclaim-Plaintiffs) allege as
follows:
INTRODUCTION
1. Yeti and Counterclaim-Defendants collaborated in a plot to destroy NPK. Their
plot was recently exposed in Nicholas Jacksons prison telephone call recordings. While
incarcerated for 14 months on battery and assault charges unrelated to this case, Jackson engaged
in more than one thousand hours of telephone calls that were recorded by the Oregon
Department of Corrections. These recordings reveal a conspiracy to destroy NPK, which
involved NPKs supplier (Yeti), one of NPKs members (Nicholas Jackson), a former NPK
employee (Jessica Lilga), and others to be named later in this action.
THE PARTIES
Counterclaim-Plaintiffs
2. NPK is a limited liability company incorporated under the laws of Oregon with its
principal place of business in Medford, Oregon. NPK is engaged in the business of
manufacturing, distributing, and marketing garden supplies and materials.
3. Rowe is an individual who resides in Medford, Oregon, and is NPKs President.
4. Townsend is an individual who resides in Medford, Oregon, and is NPKs Senior
Vice President.
5. Tang is an individual who resides in Medford, Oregon, and is NPKs Vice
President of Operations.
Counterclaim-Defendants
6. Yeti is a corporation incorporated under the laws of Oregon with its principal
place of business in Central Point, Oregon.
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7. Yeti is engaged in the business of manufacturing and selling plant washes which
are used by consumers to prevent pest infestation and mold growth, and to clean plant parts.
8. Alexander J. Heagle (Heagle) is an individual who, at all relevant times, resided
in Oregon. Heagle is the president and majority owner of Yeti. At all relevant times, Heagle
was acting either in his individual capacity or as an agent of Yeti. Further discovery will inform
when he was acting as an individual and/or as a Yeti officer.
9. Nicholas Jackson (Jackson) is an individual who, at all relevant times, resided
in Oregon. Jackson is a member of NPK and is facing expulsion from NPK pursuant to
consolidated pending Jackson County Circuit Court Case Nos. 13CV07673 and 13CV04521.
10. Jessica Lilga (Lilga) is an individual who, at all relevant times, resided in
Oregon. Lilga is a former employee of NPK.
11. Freq Water, Inc. is a corporation incorporated under the laws of Oregon with its
principal place of business in Grants Pass, Oregon.
12. Freq Water, Inc. is engaged in the business of manufacturing and selling plant
washes. These are used by consumers to prevent pest infestation, mold growth, and to clean
plant parts.
13. Heagle, Jackson, and Lilga are at times collectively referred to as Counterclaim-
Defendants.
JURISDICTION AND VENUE
14. This Court has original jurisdiction over Yetis and NPKs trademark claims
under 28 U.S.C. 1331, 1338, and 15 U.S.C. 1120, 1125, the federal declaratory judgment
claims under 28 U.S.C. 2201 and 2202, and 15 U.S.C. 1116(a), and supplemental
jurisdiction over NPKs remaining state law claims pursuant to 28 U.S.C. 1367.
15. Venue is proper in the United States District Court for the District of Oregon
pursuant to 28 U.S.C. 1391 because Counterclaim-Defendants reside in the State of Oregon
and sell products in the State of Oregon. Venue is also proper in the Portland Division pursuant
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to LR 3-2 because the contract at issue contains an exclusive venue provision for Multnomah
County.
GENERAL ALLEGATIONS
I.
The creation of the products and the Yeti-NPK 10-year Distribution Agreement.
16. Yeti manufactured liquid for three plant washes using a formula and process
which it claims includes electronic frequency imprinting. In or around 2009, Yeti began
selling its liquid for the three plant washes under the names That Stuff Plant Wash SpiderMite
Control, That Stuff Spidermite Destroyer, and That Stuff Molds and Mildew Control
Formula.
17. In or around 2009, NPKs members operated a garden store called In and Out
Gardens.
18. Yeti and NPKs members believed there was a budding market for plant wash
products, but that Yetis plant wash sales were not reaching their potential. At that time, Yeti
was primarily a manufacturing company. As a result, Yeti did not have the business, marketing,
or distribution capabilities that were necessary to significantly increase Yetis plant wash sales.
19. NPKs members, however, had business, marketing, and distribution experience.
Accordingly, Yeti agreed to have NPK create a new name, label, brand, and design for the liquid
manufactured by Yeti. Yeti also agreed to have NPK use NPKs experience and contacts to
market and distribute Yetis liquid. In return, Yeti agreed to supply the liquid it manufactured
exclusively to NPK for distribution and sale for a 10-year term.
20. In the fall of 2010, Yeti and NPK memorialized their agreements, in part, by a
series of written agreements. Pursuant to the agreements, NPK designed and created three new
plant wash product brands: Mighty Wash, Power Wash, and PM Wash (collectively
Mighty Wash).
21. On November 11, 2010, NPK and Yeti executed a 10-year distribution agreement
for NPK to bottle, label, market, and physically distribute the liquid that Yeti manufactured and
supplied to NPK. A copy of the Distribution Agreement is attached as Exhibit A to Yetis
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10 shares of Yeti as a bonus sign on. Jackson agreed to join, stating, consider it done my
friend . . . youve got me 110%.
27. During that same telephone call, Heagle and Jackson plotted to recruit Lilga to
their enterprise. Heagle explained, Jessica [Lilga] is coming over tonight and we are going to
talk about the same thing. . . . I talked to Jessica [Lilga] this morning and told her what we need
her to do is keep things nice and smooth, keep your ears open and be a mole for us. Jackson
responded yeah exactly. At the time of this conversation, Lilga was still an NPK employee.
Their plans were also documented in correspondence between Heagle and Jackson.
28. Pursuant to their plan, Yeti and Heagle recruited Lilga to use her position as an
NPK employee to steal NPKs confidential and proprietary business information, and then
become a Yeti employee and assist in the formation of Freq Water.
29. The plan required funding and a sound legal strategy. For funding Yeti, Heagle,
Jackson, and Lilga developed a relationship with Dennis Hunter, a millionaire and successful
businessman from California who wanted to expand his business enterprise into plant washes.
As the plan unfolded, Mr. Hunter also used his attorney Elizabeth Lehrer to relay strategic
objectives to the group and to the attorneys that Yeti later hired to file lawsuits against NPK.
Those lawsuits were designed to acquire NPK information that Yeti could not simply acquire by
theft.
A. The Plan, Part One: Get out of the Yeti-NPK 10-year DistributionAgreement.
30. In order to distribute the liquid directly to consumers, Yeti needed to get out of
the 10-year Distribution Agreement with NPK. Accordingly, and as Heagle explained to
Jackson and Lilga during a telephone call, Heagle had sought legal advice from a very good
attorney, who specializes in breaking down corporations and breaking down contracts . . . his
specialty is breaking corporate [ve]ils.
31. Yeti, Heagle, Jackson, and Lilga then formed a plan to force NPK to accept
onerous contractual modifications, or Yeti would declare NPK to be in breach and terminate the
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Distribution Agreement. For example, Yeti intended to demand systematic increases in the
prices of its liquid, while simultaneously shortening NPKs payment schedule from 45 to 30
days. In a series of recorded telephone conversations, Heagle, Jackson, and Lilga discussed their
plan:
a. On October 19, 2012, Heagle told Jackson that after the first of the year,
he would throw enough contract changes at NPK that t
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