prAna vs. apana…are you confused?


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The Plaintiff in this trademark lawsuit sells “sustainable clothing for yoga, travel, and outdoor adventure enthusiasts” using the PRANA word mark and logo. The PRANA trademark has been used since as early as 1992, and even this non-yogi is aware of the well-known brand.

The Defendants are accused of selling yoga apparel under the confusingly similar name “apana,” coupled with a logo that Plaintiff feels is confusingly similar to prAna’s distinctive logo design.

Here are the trademarks…you be the judge:

Of course, we’re dealing with yoga, so the Complaint was bound to get a little weird:

“Like “prana,” “apana” is also well-known to those who practice yoga, and is closely related as the balancing vayu to the prana-vayu. It is situated in the pelvic floor, and reflects energy that moves downwards and outwards.” “prana and apana are opposing, yet balanced forces. Where ‘prana’ regulates the intake of particles and energy, ‘apana’ is responsible for the elimination of the unabsorbed residues.” Assuming regular yoga folks know all this, wouldn’t that be an argument against confusion?

What do you think…are the trademarks confusingly similar? Sound off in the comments below and stay tuned for updates. This one could get interesting.

prAna Living, LLC v. IFG Corp. et al.

Court Case Number: 3:18-cv-01174-YY
File Date: Monday, July 2, 2018
Plaintiff: prAna Living, LLC
Plaintiff Counsel: Nicolas F. Aldrich, Angela E. Addae of Schwabe, Williamson & Wyatt, P.C.
Defendant: IFG Corp., Adjmi Apparel Group LLC
Causes: Federal Trademark Infringement, False Designation of Origin, Federal Unfair Competition, Common Law Trademark Infringement, Common Law False Advertising, Common Law Unfair Competition, Unfair Trade Practices, Unjust Enrichment
Court: District of Oregon
Judge: Youlee Yim You


Hydro Flask sues numerous counterfeiters, seeks Temporary Restraining Order and Preliminary Injunction


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The Plaintiff in this trademark lawsuit, Helen of Troy Limited, is the owner of the immensely popular HYDRO FLASK trademark, used in connection with vacuum insulated stainless steel water bottles and other insulated products. Helen of Troy’s affiliate Steel Technology, LLC d/b/a Hydro Flask, an Oregon limited liability company with headquarters in Bend, Oregon, founded the HYDRO FLASK brand and product line in 2009 and today is the North American marketer and distributor of HYDRO FLASK-branded products. What Pacific Northwesterner doesn’t own at least one Hydro Flask for their weekend hiking (or brewery-visiting) adventures?

Numerous defendants, some perhaps related, are accused of selling counterfeit Hydro Flask products via counterfeit websites. Given the evidence presented in the voluminous Complaint and Exhibits (see below), the counterfeiting seems fairly apparent. The Plaintiff has filed a subsequent Motion for Temporary Restraining Order and Preliminary Injunction, likely the best way to deal with multiple infringing (and non-responsive) websites.

If the counterfeiting wasn’t obvious and there was any question whether the Defendants were fighting an uphill battle, the Plaintiff’s lead attorney, Mrs. Benedick, previously served as a Judicial Extern for the presiding judge, Michael Simon. 

The Complaint’s Exhibit List is extensive and voluminous, with Exhibit 5 perhaps taking the record for the largest ever Exhibit logged by this blog, at a gargantuan 633 “never mind the PACER charges” pages.

This lawsuit will likely be a one-sided battle, with excellent high-value legal work on behalf of the Plaintiff and probably no response from the Defendants. However, if the end result is numerous injunctions and a (brief) stop to Hydro Flask counterfeiting, Plaintiff can be satisfied, at least for awhile.

Stay tuned for updates.

Helen of Troy Limited v. et al

Court Case Number: 3:18-cv-01165-SI
File Date: Friday, June 29, 2018
Plaintiff: Helen of Troy Limited
Plaintiff Counsel: Kenneth R. Davis II, Kelsey M. Benedick of Lane Powell PC, David J. Stewart, Mary Grace Gallagher of Alston & Bird LLP
Causes: Trademark Infringement, Counterfeiting, False Designation of Origin, Federal Unfair Competition, Violation of the Anticybersquatting Consumer Protection Act
Court: District of Oregon
Judge: Michael H. Simon


Motion for Temporary Restraining Order and Preliminary Injunction:


Insurer sues for infringement of RED SHIELD trademark


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Plaintiff has offered insurance under the trademark RED SHIELD since 1979.

The Defendant, previously known as Red Auto Administration Inc. apparently switched its name to Red Shield Administration in 2018, using a RED SHIELD trademark in connection with service contracts/vehicle “protection plans.”

Plaintiff alleges some fairly significant instances of consumer confusion, including a litigation threat from an attorney and a complaint from the State of California Department of Insurance

Red Shield Insurance Company v. Red Shield Administration, Inc.

Court Case Number: 3:18-cv-01159-AC
File Date: Friday,June 29, 2018
Plaintiff: Red Shield Insurance Company
Plaintiff Counsel: Kevin M. Hayes, Jeffrey S. Love of Klarquist Sparkman, LLP
Defendant: Red Shield Administration, Inc.
Causes: Federal Trademark Infringement, Federal Unfair Competition, Oregon State Trademark Infringement
Court: District of Oregon
Judge: John V. Acosta


Pacific Fence & Wire Company files lawsuit against Pacific NW Fence & Deck over use of PACIFIC trademark


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Plaintiff Pacific Fence & Wire Company, an Oregon corporation based in Clackamas, Oregon, has used its PACIFIC trademark in connection with fences, fencing materials, and fencing services since as early as 1921.

Plaintiff brings this action because the Defendants are allegedly willfully infringing Plaintiff’s PACIFIC trademark by using the trademark PACIFIC NW FENCE & DECK to advertise and provide fencing services and by using the domain name

Defendants apparently agreed to discontinue use of their trademark in 2016, temporarily stopped use in 2017-2018, but have since revived their use of the allegedly infringing trademark, hence this lawsuit.

Stay tuned for updates.

Pacific Fence and Wire Company v. M&M Pacific NW Contracting LLC et al.

Court Case Number: 3:18-cv-01106-PK
File Date: Monday, June 25, 2018
Plaintiff: Pacific Fence and Wire Company
Plaintiff Counsel: Owen W. Dukelow, David P. Cooper of Kolisch Hartwell, P.C.
Defendant: M&M Pacific NW Contracting LLC, Mike Wormington, Melissa K. Garris
Causes: Federal Trademark Infringement, Federal Unfair Competition, False Designation of Origin, Dilution
Court: District of Oregon
Judge: Paul Papak



Bob’s Red Mill rejects adoption of Gluten-Free Certification Mark



This trademark action sees Bob’s Red Mill Natural Foods, a popular producer of natural, certified organic, and gluten-free milled grain products, seeking a declaratory judgment of non-infringement of a “Certified Gluten-Free” certification mark owned by the Gluten Intolerance Group of North America.

Bob’s Red Mill has been producing gluten-free products for over 30 years, using several indicators over time to denote the gluten-free quality. They currently use the following indicator on packaging and on their website:

On May 17, 2018, Bob’s Red Mill received the following email asking that it stop using its own indicator, become certified with the “Gluten-Free Certification Organization,” and adopt the Defendant’s Certification Mark:

Bob’s Red Mill notes in the Complaint that it has never claimed certification by any outside organization and that “[t]here is no federal standard for ‘gluten-free.'”

Rejecting those requests, Bob’s Red Mill brings this lawsuit to obtain a judgment declaring that it may use its own gluten-free indicator, without having to seek the permission of, or pay money to, the Gluten Intolerance Group.

Stay tuned for updates.

Bob’s Red Mill Natural Foods, Inc. v. Gluten Intolerance Group of North America

Court Case Number: 3:18-cv-960-HZ
File Date: Thursday, May 31, 2018
Plaintiff: Bob’s Red Mill Natural Foods, Inc.
Plaintiff Counsel: Clifford S. Davidson of Sussman Shank LLP
Defendant: Gluten Intolerance Group of North America
Causes: Declaratory Judgment of Non-Infringement
Court: District of Oregon
Judge: Marco A. Hernandez


THERAPIA v. THERAPYDIA…are you confused?


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The plaintiff in this trademark lawsuit has been using the unregistered THERAPIA trademark for 7 years in connection with alternative medical services such as acupuncture, chiropractic therapy, massage, fertility consultation and treatment, and herbal medicine. Therapia operates in Portland, Oregon and promotes its services via its website,

The defendant, Therapydia Inc., is a national network of physical therapy and wellness clinics. Therapydia has locations in Portland, Beaverton, and Lake Oswego. Therapydia provides traditional (vs. alternative) medical services.

The Plaintiff first learned of Therapydia in mid-2016, and alleges instances of actual confusion beginning in January 2018, “with many patients calling Therapia to schedule appointments with Therapydia and consumers mistaking Therapydia advertisements for Therapia advertisements.”

This trademark case should be interesting. Stay tuned for updates.

Therapia P.C. v. Therapydia, Inc.

Court Case Number: 3:18-cv-909
File Date: May 24, 2018
Plaintiff: Therapia, P.C.
Plaintiff Counsel: Elizabeth Tedesco Milesnick, Andrea Selkregg of IDEALEGAL
Defendant: Therapydia, Inc.
Causes: Federal Unfair Competition, Common Law Trademark Infringement, Unjust Enrichment, Common Law Unfair Competition
Court: District of Oregon
Judge: Michael H. Simon



Actual consumer confusion alleged in lawsuit over WESTCARE trademark


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The plaintiff in this lawsuit, Westcare, is a Salem, Oregon-based provider of management services to long-term care facilities. Plaintiff claims to have used their “Westcare” mark since 1987. Plaintiff obtained a federal trademark registration in October 2017.

The defendant, Westcare Foundation, is a Nevada non-profit corporation that operates long-term and short-term care facilities, including a veterans’ facility in Salem, Oregon.

The defendant allegedly first began operating in Oregon in June 2012. Plaintiff became aware of the defendant’s Oregon facility in June 2016, and asserts numerous instances of actual consumer confusion.

Plaintiff sent a series of letters requesting that defendant adopt a DBA, with no success, hence this lawsuit. Stay tuned for updates.

Westcare Management, Inc. v. Westcare Foundation, Inc.

Court Case Number: 6:18-cv-00764-MC
File Date: Thursday, May 3, 2018
Plaintiff: Westcare Management, Inc.
Plaintiff Counsel: Randall P. Sutton of Saalfeld Griggs PC
Defendant: Westcare Foundation, Inc.
Causes: Unfair Competition, State Trademark Dilution, Common Law Trademark Infringement, Common Law Unfair Competition
Court: District of Oregon
Judge: Michael J. McShane


Software company sues Nike for breach of contract, software piracy


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The Plaintiff in this action, Quest Software, Inc., is a California-based software company that “develops and supports software used by database professionals for cloud management, security, workforce mobility and data-driven insight.”

A January 2017 audit revealed that one of its customers, Oregon-based shoe and apparel giant Nike, had deployed Plaintiff’s software in excess of the scope allowed by the parties’ SLA. The Complaint also alleges that Nike “had used pirated keys to bypass the Quest License Key System.”

Per the Complaint (below), when confronted by Plaintiff about the unauthorized uses, Nike refused to purchase additional licenses, hence this lawsuit.

Quest Software, Inc. v. Nike Inc.

Court Case Number: 3:18-cv-00721-BR
File Date: Tuesday, April 24, 2018
Plaintiff: Quest Software, Inc.
Plaintiff Counsel: Thomas A. Lerner, Theresa H. Wang, Bradford J. Axel of Stokes Lawrence, P.S.
Defendant: Nike, Inc.
Causes: Breach of Contract, Copyright Infringement, Violation of Digital Millennium Copyright Act
Court: District of Oregon
Judge: Anna J. Brown


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 1/16/18) 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.

Seed companies in trademark dispute over MINICLOVER vs. MICROCLOVER for clover seeds


The plaintiff in this declaratory judgment action,, Inc., seeks a declaration that its MINICLOVER trademark has not infringed the defendant’s rights in its MICROCLOVER® branded clover seed.

Screen Shot 2018-01-30 at 12.57.33 PM.pngScreen Shot 2018-01-30 at 12.56.39 PM.png, Inc. v. DLF Pickseed USA, Inc.

Court Case Number:  6:18-cv-00117
File Date: Monday, January 22, 2018
Plaintiff:, Inc.
Plaintiff Counsel: Carl D. Crowell of Crowell Law
Defendant: DLF Pickseed USA, Inc.
Causes: Unenforceability of Trademark, Non-infringement of Trademark
Court: District of Oregon
Judge: Ann L. Aiken