Author Archives: Kenan Farrell

adidas sues Ecco over “Three-Stripe” Trademark

25 Monday Apr 2016

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

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The adidas “Three-Stripe” crusade continues, this time against Ecco Shoes.

Screen Shot 2016-04-25 at 7.48.57 AMClick the Adidas tag on this post for other “Three-Stripe” litigation.

adidas America, Inc. et al v. ECCO USA, Inc. et al

Court Case Number: 3:2016-cv-00684
File Date: Wednesday, April 20, 2016
Plaintiff: adidas America, Inc., adidas AG
Plaintiff Counsel: Daniel P. Larsen of Ater Wynne LLP
Defendant: Ecco USA, Inc., Ecco SKO A/S
Cause: Federal Trademark Infringement, Federal Unfair Competition, Federal Trademark Dilution, Unfair and Deceptive Trade Practices, Common Law Trademark Infringement, Common Law Unfair Competition, Breach of Contract
Court: District of Oregon
Judge: Michael H. Simon

Complaint:

Stash Tea Company vs. Stash Cannabis Company…are you confused?

21 Thursday Apr 2016

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

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The Plaintiff, Stash Tea Company, has been in the business of merchandising, supplying and selling high quality tea and tea related products since the early 1970s. They are headquartered in Tigard, Oregon, with a Tea Bar in North Portland. Plaintiff owns several trademark registration for STASH, including the following:

U.S. Reg. No. 4,868,446 for STASH covering “On-line wholesale and retail store services featuring dried plants and tea; Wholesale and retail store services featuring dried plants and tea”

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Defendant, Stash Cannabis Company, is a marijuana dispensary in Beaverton, Oregon (for those not from Portland, Beaverton and Tigard are really close.) They opened in September 2015.
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Plaintiff has alleged no instances of actual confusion in the Complaint (below) but apparently doesn’t like another STASH nearby.

Does Plaintiff’s trademark registration for “dried plants” extend to marijuana flowers? Keep in mind Plaintiff has never sold marijuana flowers, dry or otherwise. The very broad and somewhat vague “dried plants” description was not challenged by a USPTO Examining Attorney but could leave the relatively new registration open to reexamination or cancellation.

Stay tuned for updates.

Universal Tea Company, Inc., dba Stash Tea Company v. Stash Cannabis Company, LLC et al

Court Case Number: 3:16-cv-00685
File Date: Wednesday, April 20, 2016
Plaintiff: Universal Tea Company, Inc. d/b/a Stash Tea Company
Plaintiff Counsel: Susan D. Pitchford, Amelia S. Forsberg of Chernoff Vilhauer LLP
Defendant: Stash Cannabis Company, LLC, Chris Matthews
Cause: Federal Trademark Infringement, Unfair Competition, Passing Off, Federal Trademark Dilution, State Trademark Dilution, Common Law Trademark Infringement, Common Law Unfair Competition, Unlawful Trade Practices
Judge: Marco A. Hernandez

Complaint:

Religious Publishing Company sued for Unauthorized Publication of Hymns

18 Monday Apr 2016

Posted by in Copyright, District of Oregon, Intellectual Property, Litigation, Oregon

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This copyright action involving religious hymns arises from an alleged breach of a prior license agreement.

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Oregon Catholic Press v. Ambrosetti et al

Court Case Number: 3:16-cv-00651
File Date: Friday, April 15, 2016
Plaintiff: Oregon Catholic Press
Plaintiff Counsel: Leonard D. DuBoff of The DuBoff Law Group
Defendant: Ambrosetti et al
Cause: Copyright Infringement
Judge: Marco A. Hernandez

Complaint:

Oregon hosts trademark dispute between “Highbrow” websites

30 Wednesday Mar 2016

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

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The Plaintiff in this action, Highbrow, LLC, seeks a declaratory judgment that its use of the “HIGHBROW” trademark in connection with an online beauty website does not infringe or otherwise violate the rights of Defendant Highbrow Magazine, LLC.

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Highbrow Magazine is a “politically liberal, general-interest magazine covering News & Politics, Media, Arts & Entertainment, Food, and Travel.”

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According to the Complaint (below), Highbrow was threatened with litigation by Highbrow Magazine and thus preemptively filed this declaratory action in Oregon. A series of discussions over a non-litigious resolution were unsuccessful.

There is some interesting language in the final demand letter from Highbrow Magazine (see Exhibit 5) that arguably forced the hand of Highbrow:

Note that we have also sent this letter to your domain registrar and Web hosting company, which means that they may be liable for contributory infringement for any continuing trademark infringement subsequent to receipt of this notice.

By bringing the registrar and web host into the situation, Highbrow was left with really no other option but to seek a court’s declaration of non-infringement. Better in Oregon than New York for many reasons for the Portland-based Highbrow.

[Update – The parties settled and a Notice of Voluntary Dismissal was filed on 5/10/16]

Highbrow, LLC v. Highbrow Magazine, LLC et al

Court Case Number: 3:16-cv-00544
File Date: Tuesday, March 29, 2016
Plaintiff: Highbrow, LLC
Plaintiff Counsel: Susan Bristow-Ford of Bristow-Ford Law
Defendant: Highbrow Magazine, LLC
Cause: Declaratory Judgment of Non-Infringement, Cancellation of Trademark, State Declaratory Judgment of Non-Infringement and No Unfair Competition
Judge: Stacie F. Beckerman

Complaint:

Exhibit 5:

Virtual Concierge App Concierge ToGo involved in trademark lawsuit against Conciergo

28 Monday Mar 2016

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

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In addition to using an allegedly confusingly similar trademark (Plaintiff’s “Concierge ToGo®” vs. Defendant’s “Conciergo“), Defendant is also alleged to have passed itself off to one of Plaintiff’s hotel clients as having an affiliation with Plaintiff.

Both parties provide virtual concierge services, allowing hotel guests to tour their hotel, discover hotel amenities, contact guest services, and obtain information on local attractions and restaurants.

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S&B Associates, Inc. v. Guest Impressions, Inc.

Court Case Number:3:16-cv-00519
File Date: Friday, March 25, 2016
Plaintiff: S&B Associates. Inc. d/b/a HospitalityVision
Plaintiff Counsel: Scott D. Eads of Schwabe, Williamson & Wyatt, P.C.
Defendant: Guest Impressions, Inc.
Cause: Federal Trademark Infringement, Unlawful Trade Practices, Common Law Trademark Infringement, Common Law Unfair Competition
Court: District of Oregon
Judge: Michael H. Simon

Complaint:

Portland’s new “Pelican’s Waiting Room” sued for Trademark Infringement on First Day of Business

23 Wednesday Mar 2016

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

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Less than a week into operation and already facing a trademark lawsuit…ouch. I’d revert to the IP attorney’s old adage of “Always do a proper trademark clearance search” but I’m not sure that was even necessary here. The Plaintiff in this trademark lawsuit is the well-known Pelican Brewing Company, set in beautiful Pacific City, Oregon.

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Defendants are alleged to have (recently…Soft Opening was March 19 and Grand Opening is today) infringed upon Plaintiff’s numerous PELICAN-formative marks by opening a bar and restaurant in Portland, Oregon (near NW 23rd, in the home of the recently closed Peddler and Pen) that serves beer, coffee, and foods under the name “Pelican’s Waiting Room.” Defendants also allegedly use a “confusingly similar” logo, as well as food and beverages branded “Pelican” including an alcoholic beverage called “Pelican’s Punch.”

Plaintiff has numerous federal registrations for PELICAN-formative marks. A few weeks ago, Plaintiff was contacted by the director of the Oregon Brewers Guild, who indicated that people in the beer and restaurant industries may be experiencing and/or may be likely to experience confusion between Plaintiff’s PELICAN Marks and Defendants’ use of the Infringing Mark.

Note that the Defendants’ website has already removed the term “Pelican” and now just calls the restaurant “The Waiting Room” so this lawsuit could be resolved quickly.

For Pelican beer aficionados, here’s some good information from the Complaint:

[Plaintiff] is opening the Pelican Brewing Pub in Cannon Beach, Oregon in late Spring 2016. Plaintiff also has plans to open a PELICAN-branded bar and restaurant in Portland, Oregon.

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Pelican Brewing Company v. Pelican’s Waiting Room, LLC et al

Court Case Number: 3:2016-cv-00486
File Date: Tuesday, March 22, 2016
Plaintiff: Pelican Brewing Company
Plaintiff Counsel: Michael A. Cohen, Nicholas (Nika) F. Aldrich, Jr., Alexandra J. Bodnar of Schwabe, Williamson & Wyatt
Defendant: Pelican’s Waiting Room, LLC d/b/a Pelican’s Waiting Room, No Comply Food Group, LLC, Kyle Rourke
Cause: Federal Trademark Infringement, Federal Unfair Competition, Common Law Trademark Infringement, Common Law Unfair Competition
Court: District of Oregon
Judge: Anna J. Brown

Complaint:

Portland restaurant Namu Korean and Hawaiian files for declaratory relief against San Francisco-based Namu Gaji

21 Monday Mar 2016

Posted by in District of Oregon, Intellectual Property, Litigation, Oregon, Portland, Trademark

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Food fight!

Namu Inc., operating in three Portland locations as Namu Korean and Hawaiian or Namu Killer Korean BBQ, has been serving Hawaiian-Korean barbeque since 2010.

In January 2016, the Portland company (“Namu PDX”) received a trademark cease-and-desist letter from Namu Gaji, a San Francisco restaurant (“Namu SFO”…which has a very wooden dining room, seriously check it out). Namu SFO’s registrations claim a date of first use of December 2006 for a “namu logo” and April 2012 for their current operating name, “Namu Gaji.”

The English translation of “namu” is “tree” or “wood”.

Rather than meet Namu SFO’s demands, Namu PDX has instead decided to seek a declaratory judgment of non-infringement in Oregon federal court. Namu PDX goes a step further and requests that Namu SFO also be prevented from advertising or marketing in the Pacific Northwest. In addition, Namu PDX seeks cancellation of Namu SFO’s federal registrations, based on some apparent problems with the owner listed in the applications.

The two NAMUs, one in Portland, NAMU PDX, and one in San Francisco, NAMU SFO, have coexisted peacefully for years. This is largely due to the fact that the Bay Area and the Northwest are distinct geographic regions for the purpose of gastronomic tourism. Where San Francisco is home to many ultra-gourmet restaurants, Portland prides itself on its accessibility to international style street food.

Stay tuned for updates.

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Namu Inc. v. Namu Haight, LLC et al.

Court Case Number: 3:16-cv-00453-PK
File Date: Tuesday, March 15, 2016
Plaintiff: Namu Inc.
Plaintiff Counsel: Darian A. Stanford, Scott T. Rennie, J. Curtis Edmondson of Slinde Nelson Stanford
Defendant: Namu Haight LLC, David Lee
Cause: Declaratory Judgment of Non-infringement of Trademark, Cancellation of Trademark Registration, Oregon Unlawful Trade Practices Act
Court: District of Oregon
Judge: Paul Papak

Complaint:

adidas “Three-Stripe” Trademark enforced against Four-Stripe Footwear

08 Tuesday Mar 2016

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

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The adidas “Three-Stripe” crusade continues, this time against four stripes…

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

adidas America, Inc. et al v. Athletic Propulsion Labs, LLC

Court Case Number: 3:16-cv-00415-HZ
File Date: Monday, March 7, 2016
Plaintiff: adidas America, Inc., adidas AG
Plaintiff Counsel: Stephen M. Feldman of Perkins Coie LLP
Defendant: Athletic Propulsion Labs
Cause: Federal Trademark Infringement, Federal Unfair Competition, State Unfair and Deceptive Trade Practices, Common Law Trademark Infringement, Common Law Unfair Competition, Federal Trademark Dilution, State Trademark Dilution
Court: District of Oregon
Judge: Marco A. Hernandez

Complaint:

Oregon Trademark Litigation Update – Too Marker Products et al v. Peter Pauper Press

03 Thursday Mar 2016

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

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Plaintiff manufactures and sells high-end markers for illustrators and design professionals. Their “COPIC” line of markers have distinctive squarish bodies and distinctive squarish cap-ends, both protected by U.S. trademark registrations.

This lawsuit arises because the configuration of Defendant’s Studio Series markers is alleged to be confusingly similar to the configuration denoted in the trademark registrations and the configuration of Plaintiffs’ markers.

In 2014, Plaintiff filed a similar lawsuit. That case resulted in a settlement agreement and permanent injunction against the defendant.

Registration

Too Marker Products, Inc. et al v. Peter Pauper Press, Inc.

Court Case Number: 3:16-cv-00387-AC
File Date: Tuesday, March 1, 2016
Plaintiff: Too Marker Products, Inc., Imagination International, Inc.
Plaintiff Counsel: Timothy S. DeJong, Jacob S. Gill of Stoll Stoll Berne Lokting & Shlachter, P.C.
Defendant: Peter Pauper Press, Inc.
Cause: Federal Trademark Infringement, Common Law Trademark Infringement, Unfair Competition
Court: District of Oregon
Judge: John V. Acosta

Complaint:

Oregon Department of Corrections sues over YouTube prison video

26 Friday Feb 2016

Posted by in Copyright, District of Oregon, Intellectual Property, Litigation, Oregon, Social Media

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The State of Oregon, via the Department of Corrections, claims to be the exclusive owner of all intellectual property rights in a video entitled “Prison Cell Extraction,” showing the techniques to remove a prisoner from a cell. Defendant somehow obtained the video and posted it on YouTube.

Upon learning of the posting, the State of Oregon initiated a Digital Millennium Copyright Act (“DMCA”) takedown request with YouTube to remove the video, and the video was initially removed by YouTube.

Screen Shot 2016-02-26 at 10.47.45 AMDefendant then filed a DMCA counter notification with YouTube, swearing under penalty of perjury that the video was removed by YouTube due to a mistake or misidentification on the basis that “its my video of me”.

YouTube informed the State of Oregon of the counter notification with instructions that if the State of Oregon did not “file an action seeking a court order to restrain the counter notifier’s allegedly infringing activity” the video could be reinstated on YouTube.

Hence, this lawsuit. Stay tuned for updates.

State of Oregon v. Ames

Court Case Number: 6:2016-cv-00345
File Date: Thursday, February 25, 2016
Plaintiff: State of Oregon
Plaintiff Counsel:Ellen F. Rosenblum, Attorney General
Defendant: Ames
Cause: Copyright Infringement
Court: District of Oregon
Judge: Thomas M. Coffin

Complaint: