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Author Archives: Kenan Farrell

Oregon Trademark Litigation Update – Kassab Jewelers v. Joseph Kassab

16 Wednesday Jan 2013

Posted by Kenan Farrell in District of Oregon, Intellectual Property, Litigation, Oregon, Trademark

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Breach of Contract, Litigation Update, Michael W. Mosman, State Trademark Dilution, Trademark Infringement, Unfair Competition

Kassab Jewelers, Inc v. Joseph Kassab et al

Court Case Number: 3:13-cv-00074-MO
File Date: Tuesday, January 15, 2013
Plaintiff: Kassab Jewelers, Inc
Plaintiff Counsel: Kevin M. Hayes, Jeffrey Stewart Love of Klarquist Sparkman, LLP; Margaret E. Schroeder of Black Helterline
Defendant: Joseph Kassab, J. Kassab Jewelers & Custom Design, Inc.
Cause: Unfair Competition, Trademark Infringement, Dilution, Breach of Contract
Court: Oregon District Court
Judge: Judge Michael W. Mosman

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Oregon Trademark Litigation Update – Slep-Tone Entertainment Corporation v. Dennys #7835

12 Saturday Jan 2013

Posted by Kenan Farrell in District of Oregon, Intellectual Property, Litigation, Oregon, Trademark

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Common Law Passing Off, Litigation Update, orego, Thomas M. Coffin, Trademark Infringement, Unfair Competition, Unlawful Trade Practices

Slep-Tone Entertainment Corporation v. Dennys #7835 et al

Court Case Number: 6:13-cv-00051-TC
File Date: Friday, January 11, 2013
Plaintiff: Slep-Tone Entertainment Corporation
Plaintiff Counsel: Carl D Crowell, Attorney at Law; Franklin J. Seibert of Franklin Jason Seibert
Defendant: DENNYS # 7835, CANBY-DENN, INC, DUFFYS IRISH PUB, BCK CORPORATION, EL PRESIDENTE MEXICAN RESTAURANT & CANTINA, EL PRESIDENTE II CORVALLIS, LLC, EL PRESIDENTE OF CORVALLIS, INC., FRANK-N-STEINS PUB, EET L.L.C., HARRISON BAR & GRILL, YEUNGS INVESTMENT INC., JPS RESTAURANT & LOUNGE, LITEFOOT, INC., RED APPLE, JAMES INVESTMENT, INC., THE PEACOCK BAR & GRILL EAST, SKMJMM, LLC, TOMMYS WELCOME INN, T.K. THIELE, LLC, HAVANA WEST, THE SHEA FAMILY CORP., RIVERSHORE BAR & GRILL, BLAME IT ON THE CHEF LLC, SUKIS BAR & GRILL, PDC GROUP, INC.
Cause: Trademark Infringement, Unfair Competition, Unlawful Trade Practices, Common Law Passing Off
Court: Oregon District Court
Judge: Magistrate Judge Thomas M. Coffin

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Creating a Trade Secret Policy

28 Friday Dec 2012

Posted by Kenan Farrell in Oregon, Trade Secret

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confidentialIntellectual property protection typically brings to mind the triumvirate of copyright, trademark and patent law.  However, not all of your valuable proprietary information will fall into these three categories.  Trade secret protection is an important alternative to understand as you shore up your intellectual property protection.

The precise language by which a trade secret is defined varies by jurisdiction, as do the particular types of information that are subject to trade secret protection. In Oregon, “trade secret” means information, including a drawing, cost data, customer list, formula, pattern, compilation, program, device, method, technique or process that: (a) Derives independent economic value, actual or potential, from not being generally known to the public or to other persons who can obtain economic value from its disclosure or use; and (b) Is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.  Or. Rev. Stat. Secs. 646.461 et seq.

Some common examples of business-related information that are subject to trade secret protection:

  • Customers’ identities
  • Marketing strategy
  • Price lists
  • Identities of suppliers
  • Budgets and resource allocations
  • Salaries

All of these types of information can give you a competitive business edge…so long as they don’t fall into the hands of your competitors.  In order to maintain your trade secrets, it’s often necessary to have in place a company trade secret policy.  Such a policy should include at least the following:

  • Have all employees, contractors, outside consultants or anyone else who may be exposed to sensitive information sign a confidentiality agreement.  Consider making it a part of your employment contracts.
  • Keep sensitive material locked in a safe place, accessible only to those on a “need-to-know” basis.
  • Limit the circulation of confidential documents.
  • Clearly designate confidential documents as SECRET or CONFIDENTIAL.
  • Periodically review your trade secret policy with employees.

Your company likely has valuable, confidential information that should be protected as a trade secret.  Consider consulting a trade secret professional to help your company establish a secure trade secret policy.

Oregon Trademark Litigation Update – Sazerac Company v. Hood River Distillers

21 Friday Dec 2012

Posted by Kenan Farrell in Intellectual Property, Litigation, Oregon, Trademark

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Common Law Passing Off, Common Law Trademark Infringement, Common Law Unfair Competition, Dennis J. Hubel, Federal Trade Dress Infringement, Federal Unfair Competition, Litigation Update, Trademark Infringement

Sazerac Company, Inc. v. Hood River Distillers Inc

Court Case Number: 3:12-cv-02304-HU
File Date: Thursday, December 20, 2012
Plaintiff: Sazerac Company, Inc.
Plaintiff Counsel: Lori F. Mayall, Peter J. Willsey, Scott P. Zoppoth, Todd S. Bontemps of Cooley LLP
Defendant: Hood River Distillers Inc
Defendant Counsel: Robert D. Scholz, Megan L. Ferris of MacMillan, Scholz & Marks PC
Cause: Trademark Infringement; Federal Unfair Competition; Federal Trade Dress Infringement; Common Law Trademark Infringement, Unfair Competition, and Passing Off
Court: Oregon District Court
Judge: Magistrate Judge Dennis J. Hubel

Complaint:

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Answer, Affirmative Defenses and Counterclaim:

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Planning Your Digital Estate

22 Thursday Nov 2012

Posted by Kenan Farrell in Copyright, Intellectual Property, Oregon, Social Media

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Copyright, Digital Estate

I’ve written previously on the importance of planning beyond one’s own death. Simple planning now can prevent unnecessary headaches after you’ve passed. This is typically accomplished by preparing a will and/or obtaining life insurance. But with the Internet and cloud computing increasingly dominating our daily lives, more adults are taking their lives online, often through social networking, online gaming, or blogging. Consumers shop, pay bills, and bank online. Important accounts, documents, files and photos are now often managed exclusively online, almost always behind usernames and passwords.

Dbrainjacko you know what would happen to your blog if you die? What happens to the passwords and content of your multiple email accounts? Who, if anyone, would you want to control your Twitter, Facebook or, most importantly, World of Warcraft account? Think about these questions now and speak to an attorney who can help you plan your digital estate.

Here are a few general guidelines from the MoneyGrubbingLawyer:

Email Accounts
As a general rule, you own your email and electronic correspondence and you can leave this to whomever you choose in your will. However, if your family or executors don’t know your email passwords, they may have trouble retrieving it. Gmail and Hotmail will both give access to email contents upon proof of death and proof of relationship.

Facebook and Social Networking Accounts
Facebook and other social networking accounts are a little different than email accounts as the information on your profile isn’t as private as your emails – your profile is accessible and viewable by anyone who you’ve granted access. Your profile also appears as a friend of countless others, and will continue to appear until the account is either closed or your friends delete you.

Myspace advises that their policy is to allow access to a deceased’s account upon verification of death, and a significant number of Myspace profiles remain active as memorials. Facebook also allows for the “memorialization” of accounts, where the accounts remain open as a tribute. There’s even a form you can use to report a user who has died. However, Facebook won’t release login information, so the account can’t be accessed, changed or updated.

Blogs and Online Content
An additional consideration for managing your digital estate arises for those of us who run blogs. Much like social networking and email accounts, online service providers such as WordPress and Blogger are reluctant to release login details, even to an executor. If your blog is hosted on your own server or through a third-party hosting service, the task of accessing the site is further complicated and in some cases may be close to impossible.

If you’ve got a blog, you’ve also got intellectual property including copyright to your writings and any trademarks associated with your site. You may also have photographs, music, and other works that are published and maintained online. Copyright generally lasts for 70 years after the death of the author, so there’s a significant tail period of copyright protection that vests in your estate and, just like any other form of property, IP can be given to a specific individual in your will. If the will does not specify who gets your intellectual property, the standard rules of distribution apply.

Online Worlds
Users spend a great deal time of time creating and managing identities in online worlds like World of Warcraft or Second Life. But what will happen to these accounts upon your death? World of Warcraft will transfer ownership of an account to an immediate family member upon proof of death, and the community has even been known to host virtual funerals. Second Life will turn over account information upon receiving proper notice and documentation.

wowdeath

As with other estate planning stories, the moral is to plan ahead. Here are your action items for planning the disposition of your digital information upon your death:

  1. Select a “digital” executor, someone who you trust to carry out your wishes with respect to your online information
  2. Tell your executor what you want done and give him or her the information needed to carry out your wishes.
  3. Prepare a list of your email and social networking accounts along with your login data and brief details on how to access the accounts.
  4. Update your will to include specific provisions for who will take ownership of your intellectual property and any data that you leave behind.

Stories from the Week that Was – 6/3/12-6/9/12

10 Sunday Jun 2012

Posted by Kenan Farrell in Social Media, Trademark

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Flame, Twitter

New reasons to protect trademarks through registration

Tech-Savvy Seniors: Half of U.S. Adults Over 65 Are Online

Crypto breakthrough shows Flame was designed by world-class scientists

“I am sorry to say that there is too much point to the wisecrack that life is extinct on other planets because their scientists were more advanced than ours.”
John F. Kennedy

Twitter’s first commercial:

Stories from the Week that Was – 5/27/12-6/2/12

03 Sunday Jun 2012

Posted by Kenan Farrell in Intellectual Property

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China tightens grip on social media with new rules

TV Networks Say You’re Breaking The Law When You Skip Commercials

Germany sets new solar power record, institute says

Got Compliance? The EU Cookie Law & What You Need to Do

Google Applies for More than 50 New Domains Including .LOL and .YouTube

Target on your cyber back: DHS has a list of words deemed ‘suspicious’

Man sues to have ‘Google’ declared a generic word

Privacy practices: how the FTC MySpace settlement affects your business

2012 Logo Trends

Google Obliges Website Copyright Takedown Requests 97% of the Time

NLRB Issues Third Social Media Report

From David Elliott’s Complaint for Cancellation of Trademark and Declaratory Relief:

“3. The term “GOOGLE” is, or has become, a generic term universally used to describe the action of internet searching with any search engine, which cannot serve as a trademark to the exclusion of others.”

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Stories from the Week that Was – 5/20/12-5/26/12

27 Sunday May 2012

Posted by Kenan Farrell in Privacy, Social Media

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Cookies, Facebook, NDAA, Twitter

Stories from the Week that Was – 5/20/12-5/26/12

Pakistan Blocks Twitter

The Failures of the Facebook Generation in the Arab Spring

IP-Address Can’t Even Identify a State, BitTorrent Judge Rules

Drones Take Flight For Civilian Use

7 Ways To Get Yourself Detained Indefinitely

UK ‘cookie law’ takes effect: What you need to know

“A patent is property carried to the highest degree of abstraction—a right in rem to exclude, without a physical object or content.” -Oliver Wendell Holmes

Oregon Trademark Litigation Update – adidas America v. Wolverine World Wide

26 Saturday May 2012

Posted by Kenan Farrell in District of Oregon, Intellectual Property, Litigation, Oregon, Trademark

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Common Law Trademark Infringement, Dennis J. Hubel, Federal Trademark Dilution, Federal Trademark Infringement, Federal Unfair Competition, Injury to Business Reputation, Marco A. Hernandez, State Trademark Dilution, Unfair and Deceptive Trade Practices, Unfair Competition

adidas America, Inc. et al v. Wolverine World Wide Inc.

Court Case Number:    3:12-cv-00945-HZ
File Date:    Friday, May 25, 2012
Plaintiff:     adidas America, Inc., adidas AG
Plaintiff Counsel:     Stephen M. Feldman of Perkins Coie LLP
Charles H. Hooker III, R. Charles Henn Jr. of Kilpatrick Townsend & Stockton LLP
Defendant:     Wolverine World Wide Inc.
Cause:    Federal Trademark Infringement, Federal Unfair Competition, Unfair and Deceptive Trade Practices, Common Law Trademark Infringement, Unfair Competition, Federal Trademark Dilution, State Trademark Dilution, Injury to Business Reputation
Court:    Oregon District Court
Judge:     Magistrate Judge Dennis J. Hubel, Judge Marco A. Hernandez

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Stories from the Week that Was – 5/13/12-5/19/12

20 Sunday May 2012

Posted by Kenan Farrell in Trademark

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Google, Kodak

Stories from the Week that Was – 5/13/12-5/19/12

Kodak Had a Secret Nuclear Reactor Loaded With Enriched Uranium Hidden In a Basement

Google revamps search, tries to think more like a person

McDonald’s tries to rebrand itself, in Berkeley, of all places

“No backroom deals to regulate the Internet. Speak out now against TPP, the new ACTA.” – Electronic Frontier Foundation

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