Oregon Trademark Litigation Update:

Adidas America v. Calmese
No. 08-CV-91-ST (October 7, 2009)
U.S. District Court, Oregon
Before: Brown

For Full Opinion:
2009 U.S. Dist. LEXIS 94690

TRADEMARK; LIKELIHOOD OF CONFUSION  (Defendant failed to show likelihood of confusion even though the court found Defendant had fanciful or arbitrary mark, similar business channels, and bad faith on the part of plaintiff.)

Opinion (Brown): Defendant Calmese registered a trademark in the phrase “prove-it!” Plaintiff Adidas America used the same phrase on a line of t-shirts. Plaintiff sued defendant for declaratory judgment of non-infringement. Plaintiff moved for summary judgment. The district court held three factors of the likelihood of confusion test weighed in favor of Defendant: Defendant’s mark was fanciful or arbitrary, both parties sold goods in the Phoenix, Arizona area, and therefore operated in similar business channels, and Plaintiff had actual or constructive knowledge of Defendant’s trademark, thus showing bad faith on the part of Plaintiff. However, Plaintiff’s goods were not related to Defendant’s goods, the marks used lacked similarity, and Defendant showed no evidence of actual confusion. The court held Defendant failed to show any likelihood of confusion. Plaintiff’s motion for summary judgment granted.

Source: Willamette Law Online