adidas sues Puma over “Three-Stripe” Trademark

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The adidas “Three-Stripe” crusade rolls on, this time targeting Puma’s new four-striped soccer cleat.

Interestingly, unlike the other soccer cleats on the Puma website, this one doesn’t bear Puma’s classic formstrip logo.

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Click the Adidas tag on this post for other “Three-Stripe” litigation.

adidas America Inc. et al v. Puma North America, Inc.

Court Case Number: 3:15-cv-00582
File Date: Wednesday, April 08, 2015
Plaintiff: adidas America Inc., adidas AG, adidas International Marketing B.V.
Plaintiff Counsel: Stephen M. Feldman of Perkins Coie LLP, R.Charles Henn Jr. and Jennifer Fairbairn Deal of Kilpatrick Townsend & Stockton LLP
Defendant: Puma North America, Inc.
Cause: Federal Trademark Infringement, Federal Unfair Competition, Federal Trademark Dilution, Unfair and Deceptive Trade Practices, Common Law Trademark Infringement and Unfair Competition, State Trademark Dilution, Injury to Business Reputation
Court: District of Oregon
Judge: TBD

Should You Register Your Trademark?

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Businesses often inquire whether it’s in their best interest to register their trademarks with the U.S. Patent and Trademark Office (“USPTO”).

The traditional short answer is: “Yes, if at all possible, you should register your trademarks!” This advice has been widely echoed by qualified intellectual property attorneys.

However, the reality of this economy is that small businesses, non-profits and individuals aren’t able to do everything a lawyer says they SHOULD do.  In Oregon and abroad, the bottom line counts now more than ever.  Thousands spent on obtaining a trademark registration are thousands not spent on other aspects of your business, like R&D, Marketing or Payroll.  As such, I often find it helpful to discuss with clients not only what they SHOULD do, but what they CAN do and what they MUST do.

trademark-symbolThe purpose of this post is to give you additional financial information with which you can decide whether to register your trademarks. Some lawyers will tell you it’s “expensive.”  The same lawyers might tell other clients that it’s “not expensive.”  I’ll lay out some real numbers that you can actually put into your budget.

First, keep in mind that registration of  trademarks is not required. Common law rights arise naturally from actual use of a trademark. Generally, the first entity to either use a trademark in commerce or file an intent to use application with the USPTO has the ultimate right to use and registration. However, filing for and receiving a federal trademark registration on the Principal Register provides several advantages:

  • constructive notice to the public of the registrant’s claim of ownership of the mark;
  • a legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;
  • the ability to bring an action concerning the mark in federal court;
  • the use of the U.S registration as a basis to obtain registration in foreign countries; and
  • the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.

Optimally, all trademark owners who consider their trademark a valuable business asset (…and if not, why continue using the mark?) would like to obtain these advantages.  But registration is not free.  Here are some of the likely fees (based on the USPTO’s current Fee Schedule, last revised 1/1/17) that you will face before and during the registration procedure:

Clearance Search – Before adopting and using a trademark, it’s advised that a trademark clearance search be performed to determine the availability of the trademark. This will help determine whether there is another user already using the trademark, i.e. having superior rights in the trademark. By performing an initial trademark clearance search, a business can avoid incurring liability for trademark infringement and avoid investing resources in a trademark which could be unusable because it infringes another’s trademark rights. Expect the clearance search to cost $200-400.

A commercial research service like Thomson CompuMark, which conducts the actual search on its many databases, will cost around $700. Add attorney time to review and report on the results.

Application Filing Fee – The official filing fee is $275-$325 per trademark. Your  attorney will charge a fee for the application preparation and filing.

Filing an Amendment to Allege Use/Statement of Use $100. Both the Amendment to Allege Use and Statement of Use serve a similar function…they alert the USPTO that you are now using the trademark in commerce. This is important for intent-to-use applications where a trademark application is filed prior to actual use because registration cannot be obtained until the trademark has been used in commerce. Your attorney will spend time gathering specimens, and preparing and filing the necessary documents.

Extension of Time for Filing a Statement of Use – $150. It is possible to obtain up to six (6) extensions of time to file a Statement of Use. Each extension is for six (6) months, up to a total of thirty-six (36) months.  Of course, each extension must be accompanied by a fee. There will also be some nominal attorney time to prepare the extension.

Response to Office Action – Office actions are letters from the USPTO that set forth the legal status of a trademark application. Typically, the examining attorney will set forth specific requirements that the applicant must meet before an application can be approved for publication. Believe it or not, there is no filing fee for a Response to Office Action. However, a majority of your attorney’s time in the application procedure will likely be spent reviewing and responding to office actions.

Looking into the future, you’ll want to keep in mind the renewal costs which will be paid after five (5) years. Expect to pay $500+ for each class of goods and services that your trademark protects. For example, if a band wants to protect its band name for both “musical services” and “t-shirts,”  it will be paying filing fees for two separate classes of protection. This applies to filing fees also.

Notwithstanding the renewal costs, and assuming that no extensions, etc. are required, you’re looking at approximately $1000 just in filing fees for one trademark protecting one class of goods and services. On top of these established PTO fees, you’ll be paying your trademark attorney for each document prepared or filing made. Therefore, choosing a trademark attorney who provides excellent service at a lower cost can greatly enhance your bottom line. Also, these are just some of the more common fees you will face in registering your trademark…there may be additional filings/costs associated with a trademark registration, depending on the specifics of your trademark and the strategy of your attorney.

So, should you register your trademark??? The traditional answer still rings true…if fiscally possible, do it. Trademarks are valuable business assets that are typically far greater in value than any costs associated with registration. Always bear in mind that economies rise and fall, but trademark rights can continue indefinitely. Unfortunately, that means that spending less today to protect your trademark rights may allow another party to intervene and lock up important trademark rights for the future.  Also, be sure to consider how licensing opportunities might be affected should you not register your trademarks.

Final practical note: Any time you claim rights in a mark, you may use the “TM” (trademark) or “SM” (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the USPTO. It’s free and reinforces good habits among those wearing the “marketing” hat.

Oregon Trademark Registration

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Clients often inquire whether they should register their trademarks at the State or Federal level. Starting with the assumption that even small local businesses may encounter a challenge to their trademark in the future, I generally try to impress upon them the advantages of federal registration. After all, many of my clients end up being successful and seek to expand outside of Oregon’s borders. With the exponential growth of “e-commerce,” the Internet is providing opportunities for national and global expansion, even for the smallest Oregon businesses.  It is therefore important for businesses of all types and sizes to choose and protect their trademarks with care…often this can mean protection at BOTH the State and Federal level.

Here’s a quick primer on registration of a trademark in Oregon:

Trademarks are registered with the Oregon Secretary of State. There is a non-refundable fee of $50 for filing a trademark application, and the registration must be renewed every 5 years.

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Registration of a trademark with the Oregon Secretary of State creates a legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark in Oregon commerce in connection with the goods or services described in the application. (A federal registration would protect your trademark in all states where it is used.)

The Oregon Trademark Act (ORS 647) protects words, names, symbols or designs, or any combinations thereof when they are used to distinguish the source of the goods or services rendered by one party from the goods or services of another party. Marks are checked against other marks registered in Oregon, but not against corporate, fictitious, or assumed names.

Oregon trademark rights arise from actual use of the mark in commerce, i.e. there are no “intent-to-use” applications.

A mark cannot be registered until it has been used in Oregon. Oregon defines a mark being “used” when it is placed in any manner on the goods or their containers or on the tags or labels affixed thereto, or when it is used to identify the services of one person and distinguish them from the services of others, and such goods or services are sold, distributed, or rendered in Oregon.

So what are some of the main benefits of state registration over federal registration?  It’s cheaper (State – $50/class vs. Federal – $275/class) and quicker. I’ve seen turnaround of weeks, not months or years as with the USPTO. State registration can be a good remedy for a purely local entity. State registration provides an increased level of trademark protection…at least you can claim protection on your “home turf.”  However, in the long run, I’d recommend that any entity which anticipates expanding outside of Oregon, particularly via Internet “e-commerce,” should seek federal trademark registration to best protect their valuable trademark rights.

I look forward to hearing from proponents of State registration…how has an Oregon State registration uniquely benefitted either you or your clients?

Skydiving Software Company Alleges Federal Defend Trade Secrets Act Violations by Former Member

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The Complaint alleges that individual defendant Cockayne, as a former member of Plaintiff’s organization, developed enterprise software for commercial skydiving operators. Upon leaving Plaintiff’s organization in January 2016, defendant Cockayne was to return all software code and hardware. However, the software code was allegedly still used in violation of a “Withdrawal” agreement and provided to Pacific Northwest Skydiving Center, one of Plaintiff’s former clients.

The Complaint alleges both Federal and Oregon trade secrets violations as well as copyright infringement of the registered source code.

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DropzoneMS, LLC v. Cockayne et al

Court Case Number: 3:16-cv-02348-YY
File Date: Tuesday, December 20, 2016
Plaintiff: DropzoneMS, LLC
Plaintiff Counsel: John Mansfield of MansfieldLaw
Defendant: Steven Cockayne, Natalie Rogers, David Thorpe, Pacific Northwest Skydiving Center
Cause: Federal Defend Trade Secrets Act, Oregon Uniform Trade Secrets Act, Copyright Infringement
Court: District of Oregon
Judge: Youlee Yim You

Complaint:

ROAMBUILT v. ROAM…are you confused?

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Both parties in this trademark lawsuit recently began using their respective trademarks (ROAMBUILT v. ROAM). ROAMBUILT is used in connection with “automotive parts,” primarily custom parts for Mercedes Benz Sprinter vans. ROAM is being used in connection with vehicle rental services and automobile customization services.

The parties corresponded for several months regarding the possibility of infringement and trademark coexistence. Unable to resolve the situation themselves, Plaintiff Roambuilt now seeks court intervention as they assert slight priority rights.

Stay tuned for updates.

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Roambuilt LLC v. Roam, LLC

Court Case Number: 3:16-cv-02217-AC
File Date: Wednesday, November 23, 2016
Plaintiff: Roambuilt LLC
Plaintiff Counsel: Elizabeth Tedesco Milesnick of Miller Nash Graham & Dunn LLP
Defendant: Roam, LLC
Cause: Federal Trademark Infringement, Federal Unfair Competition, Common Law Trademark Infringement, Common Law Unfair Competition
Court: District of Oregon
Judge: John V. Acosta

Complaint:

Portland Artist sues Vans over Misappropriated Shoe Artwork

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Plaintiff is a visual artist residing in Portland, Oregon. In 2010, Plaintiff installed artwork at a Sole Classics shoe store in Columbus, Ohio. The work was registered with the U.S. Copyright Office.

Plaintiff asserts that the defendant in this copyright lawsuit, Vans, Inc., has incorporated his artwork without permission into one of Vans’ 2016 limited edition shoes, the Sole Classics x Vans Vault Half Cab LX “10 Seasons” (see Exhibit D below). Plaintiff alleges that Sole Classics licensed rights to Vans that it did not possess.

Stay tuned for updates.

Nichols v. Vans, Inc.

Court Case Number: 3:16-cv-02208-HZ
File Date: Tuesday, November 22, 2016
Plaintiff: Jeremy Nichols
Plaintiff Counsel: Robert Swider, Alex Fund of Swider Haver LLP
Defendant: Vans, Inc.
Cause: Copyright Infringement
Court: District of Oregon
Judge: Marco A. Hernandez

Complaint:

Wholesale Garden Supply Manufacturer Sues Competitor for Trademark Infringement, Unlawful Trade Practices

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Plaintiff Sunlight Supply, Inc., based in Vancouver, Washington, sells products for indoor, hydroponic, organic and greenhouse gardening. Plaintiff is a wholesale-only business, selling its products exclusively through authorized retail dealers.

Defendant has allegedly violated Plaintiff’s trademarks rights in its TITAN, GROW WITH US and WHEN YOU’RE GARDENING WITH THE GODS, THING JUST GROW BETTER! registered trademarks.

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Sunlight Supply, Inc. v. Cirrus Systems, Inc.

Court Case Number: 3:16-cv-02201
File Date: Monday, November 21, 2016
Plaintiff: Sunlight Supply, Inc.
Plaintiff Counsel: David P. Cooper, Owen W. Dukelow, Desmond J. Kidney of Kolisch Hartwell, P.C.
Defendant: Cirrus Systems, Inc.
Cause: Federal Trademark Infringement, Unlawful Business, Trade Practices
Court: District of Oregon
Judge: Michael H. Simon

Complaint:

Rogue sues Photographer/Videographer for Copyright Infringement

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Plaintiff Oregon Brewing Company (a.k.a. Rogue) is suing its past photographer/videographer, asserting 39 separate instances of copyright infringement. The Defendant allegedly used photographs and short films he had created (but which were owned by Rogue pursuant to an Employment Agreement, see Exhibit 1) on his personal website. Additionally, Defendant submitted the 39 works for registration with the Registrar of Copyrights.

Oregon Brewing Company v. Blair

Court Case Number3:16-cv-02130-HZ
File Date: Monday, November 7, 2016
Plaintiff: Oregon Brewing Company
Plaintiff Counsel: Andrew D. Glascock of Hiefield Foster & Glascock, LLP
Defendant: Benjamin R. Blair
Cause: Copyright Infringement
Court: District of Oregon
Judge: Marco A. Hernandez

Complaint:

Exhibit 1:

West Burnside Vape Spot files trademark lawsuit against SE Division VapeSpot

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Since 2013, Plaintiff has operated a Portland vape shop/lounge on West Burnside Street called Vape Spot.

In August 2016, Plaintiff became aware that Defendant had opened a VapeSpot on SE Division Street. Daily instances of confusion and an unsolicited call from Captain Amsterdam regarding Kratom – a product apparently being investigated by the FDA -led to this trademark lawsuit.

Smoke Free, LLC v. Vapespot, LLC

Court Case Number: 3:16-cv-02060-AA
File Date: Wednesday, October 26, 2016
Plaintiff: Smoke Free, LLC
Plaintiff Counsel: Aurelia Erickson of McGaughey Erickson
Defendant: Vapespot, LLC
Cause: False Designation of Origin, Unfair Competition, Common Law Trademark Infringement, Common Law Unfair Competition, State Trademark Dilution, Injury to Business Reputation, Unjust Enrichment
Court: District of Oregon
Judge: Ann L. Aiken

Complaint:

 

Endeavour Capital files trademark lawsuit against mining fund

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Plaintiff seeks to protect its registered ENDEAVOUR and ENDEAVOUR CAPITAL trademarks (used in connection with investment services) from Defendant’s use of the name “Endeavor Capital Mining Fund.”

DVSM, L.L.C. v. Endeavour Capital Mining Fund L.P.

Court Case Number3:16-cv-01985-SI
File Date: Thursday, October 14, 2016
Plaintiff: DVSM, L.L.C.
Plaintiff Counsel: Jon P. Stride, Eric Beach of Tonkon Torp LLC
Defendant: Endeavour Capital Mining Fund L.P.
Cause: Trademark Infringement
Court: District of Oregon
Judge: Michael H. Simon

Complaint: