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Oregon Intellectual Property Blog

Oregon Intellectual Property Blog

Category Archives: Intellectual Property

Oregon Trademark Litigation Update – Sleash v. One Pet Planet et al

30 Friday May 2014

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

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Contributory Trademark Infringement, Janice M. Stewart, Litigation Update, Trademark Infringement, Unfair Competition

Sleash, LLC v. One Pet Planet, LLC et al

Court Case Number: 3:14-cv-00863-ST
File Date: Wednesday, May 28, 2014
Plaintiff: Sleash, LLC
Plaintiff Counsel: Johnathan E. Mansfield of MansfieldLaw
Defendant: One Pet Planet, LLC, Amazing Pet Products, Choo Choo Imports LLC
Cause: Trademark Infringement, Unfair Competition, Contributory Trademark Infringement
Court: District of Oregon
Judge: Magistrate Judge Janice M. Stewart

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Oregon Trademark Litigation Update – iovation v. IOvations

29 Thursday May 2014

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

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Common Law Trademark Infringement, False Designation of Origin, Federal Trademark Infringement, Litigation Update, Paul Papak, Unfair Competition

Plaintiff iovation, based in Portland, Oregon, sells computer security and fraud prevention services to customers internationally. Plaintiff has used the term IOVATION as a trade name and trademark since at least as early as June 1, 2004.iovation Screen Shot

Defendant IOvations, of Massachusetts, was organized on July 12, 2004. According to the Complaint, IOvations first limited the services it offered under the IOVATIONS mark to digital data storage solutions. More recently, IOvations has expanded the services it offers under the mark to include computer “network and security solutions.”

Given the similarity, both visually and aurally, between the IOVATION and IOVATIONS trademarks, the closely-related goods and services that the parties sell, and the parties’ overlapping channels of trade and classes of consumers, Plaintiff alleges that actual confusion between the parties and their respective marks is likely to continue and increase.

Failure to negotiate mutually-agreeable terms of coexistence led to this lawsuit.

iovation, Inc. v. IOvations, Inc.

Court Case Number: 3:14-cv-00838
File Date: Thursday, May 22, 2014
Plaintiff: iovation, Inc.
Plaintiff Counsel: Stuart R. Dunwoody of Davis Wright Tremaine LLP
Defendant: IOvations, Inc.
Cause: Federal Trademark Infringement, False Designation of Origin, Common Law Trademark Infringement, Unfair Competition
Court: District of Oregon
Judge: Paul Papak

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Oregon Trademark Litigation Update – Leatherman Tool Group v. Armitage Hardware and Building Supply

29 Thursday May 2014

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

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Common Law Unfair Competition, Cybersquatting, False Designation of Origin, Litigation Update, Michael W. Mosman, Trademark Infringement, Unfair Competition

Leatherman Tool Group, an Oregon corporation, manufactures and distributes engineered multi-tools, pocket tools, and knives that are designed for outdoor, tactical, professional, and general use. Leatherman promotes and sells its products to consumers directly both online at leatherman.com, as well as in its retail store, The Leatherman Store, located in Portland, Oregon.

Leatherman is the owner of multiple federal trademark registrations for LEATHERMAN.

800px-Leatherman_Super_Tool_OpenDefendant, an Illinois corporation, owns and operates both Armitage Direct and leathermantool.com, an online retail site that sells multi-tools, pocket tools and knives that are manufactured by Leatherman.

Defendant is neither an authorized distributor nor an authorized reseller of Leatherman’s products, hence the lawsuit.

Leatherman Tool Group, Inc. v. Armitage Hardware and Building Supply, Inc.

Court Case Number: 3:14-cv-00823-MO
File Date: Monday, May 19, 2014
Plaintiff: Leatherman Tool Group, Inc.
Plaintiff Counsel: Kaley L. Fendall, John F. McGrory Jr. of Davis Wright Tremaine LLP
Defendant: Armitage Hardware and Building Supply, Inc.
Cause: Trademark Infringement, Cybersquatting, Unfair Competition, False Designation of Origin, Common Law Unfair Competition
Court: District of Oregon
Judge: Judge Michael W. Mosman

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Oregon Trademark Litigation Update – Too Marker Products v. Alvin and Company

12 Monday May 2014

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

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Common Law Trademark Infringement, Federal Trademark Infringement, John V. Acosta, Litigation Update, Unfair Competition

Plaintiff manufactures and sells high-end markers for illustrators and design professionals. Their 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 Heritage A-Line markers is alleged to be confusingly similar to the configuration denoted in the trademark registrations and the configuration of Plaintiffs’ COPIC line of markers.

 [Update 12/16/14]: This case has been settled and a final judgment entered along with a permanent injunction against the Defendant.

Final Judgment by Consent and Permanent Injunction:

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Too Marker Products, Inc. et al v. Alvin and Company, Inc.

Court Case Number: 3:14-cv-00773-AC
File Date: Friday, May 09, 2014
Plaintiff: Too Marker Products, Inc., Imagination International, Inc.
Plaintiff Counsel: Timothy S. DeJong, Jacob S. Gill of Stoll Stoll Berne Lokting & Schlachter PC
Defendant: Alvin and Company, Inc.
Cause: Federal Trademark Infringement, Unfair Competition, Common Law Trademark Infringement
Court: District of Oregon
Judge: Magistrate Judge John V. Acosta

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Oregon Trademark Litigation Update – Cyber Acoustics v. Shenhen Fenda Technology

30 Wednesday Apr 2014

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

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Breach of Contract, False Designation of Origin, John V. Acosta, Litigation Update, Trademark Infringement

Cyber Acoustics, LLC et al v. Shenhen Fenda Technology Co. Ltd.

Court Case Number: 3:14-cv-00695-AC
File Date: Monday, April 28, 2014
Plaintiff: Cyber Acoustics, LLC, Cyber Acoustics HK Ltd.
Plaintiff Counsel: J. Peter Staples, Susan D. Pitchford of Chernoff Vilhauer McClung & Stenzel LLP
Defendant: Shenhen Fenda Technology Co. Ltd.
Cause: Trademark Infringement, False Designation of Origin, Breach of Contract
Court: District of Oregon
Judge: Magistrate Judge John V. Acosta

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Oregon Trademark Litigation Update – Nike v. Ho et al

29 Tuesday Apr 2014

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

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Breach of Contract, Breach of Fiduciary Duty, Conversion, Fraud, Litigation Update, Michael W. Mosman, Trademark Infringement

Defendants Yamaguchi and Ho are alleged to have used their position as managers at Nike to steal unique and/or custom athletic footwear in order to profit from the sale of those shoes to collectors of rare athletic shoes, known in the industry as “Sneakerheads.” These defendants allegedly lied to Nike and its manufacturers by misrepresenting that the shoes would be used for promotional and marketing purposes in order to trick them into manufacturing inventory for the illicit scheme. Defendant Keating allegedly acted as the middle-man in the unlawful enterprise by knowingly purchasing and re-selling the stolen footwear obtained by Yamaguchi and Ho.

Nike brings this action to recover the stolen shoes, recover the illicit gains obtained by Defendants from the sale of the stolen goods, to obtain an injunction preventing Defendants from continuing to participate in the illicit sale of stolen Nike goods, and to seek an award of punitive damages.

Nike Swoosh Registration

 

Nike Inc. v. Tung Wing Ho et al

Court Case Number: 3:14-cv-00696-MO
File Date: Monday, April 28, 2014
Plaintiff: Nike Inc.
Plaintiff Counsel: Paul H. Trinchero, Robert C. Weaver Jr. of Garvey Schubert Barer
Defendant: Tung Wing Ho, Denise Wei-Ching Yee, Kyle Keoki Yamaguchi, Shu-Chu Yamaguchi, Jason M. Keating
Cause: Trademark Infringement, Conversion, Fraud, Breach of Fiduciary Duty, Breach of Contract
Court: District of Oregon
Judge: Judge Michael W. Mosman

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Oregon Copyright Litigation Update – Pendleton Woolen Mills v. Kraff’s Men’s Wear Co.

17 Thursday Apr 2014

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

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Breach of Contract, Common Law Trademark Infringement, Common Law Unfair Competition, Copyright Infringement, Federal Trademark Infringement, Federal Unfair Competition, Intentional Interference with Economic Relations, Litigation Update, Paul Papak

Plaintiff is a Portland, Oregon-based designer/manufacturer/retailer of high quality wool fabrics and apparel, and is known for its unique proprietary fabric and blanket designs. Plaintiff regularly enters into sales contracts with wholesale customers, who must agree that “The Purchaser will not sell the goods or any part thereof, to another dealer or to any other reseller, and will not sell the goods through the Internet without the written consent of [Plaintiff].” The 20 John Doe defendants are wholesale customers that have signed the sales contract. None were authorized to sell to Defendant Kraff’s, the primary target of the lawsuit.

Defendant Website ScreenshotDefendant Kraff’s is a retailer operating a clothing store that markets and sells apparel, blankets, and related products in Toppenish, Washington. From approximately 1941 until 2006, Kraff’s was a wholesale customer of Plaintiff. Kraff’s has allegedly continued to purchase product from a Doe defendant after termination of their sales contract with Plaintiff, thus making them an unauthorized reseller of Plaintiff’s goods. Plaintiff brings this lawsuit with numerous copyright claims based on their distinctive designs and trademark claims based on the unauthorized use of their company name.

Stay tuned for updates.

Pendleton Woolen Mills Inc. v. Kraff’s Men’s Wear Co. Inc. et al

Court Case Number: 3:14-cv-00628-PK
File Date: Wednesday, April 16, 2014
Plaintiff: Pendleton Woolen Mills Inc.
Plaintiff Counsel: Parna A. Mehrbani, Vicki L. Smith of Lane Powell PC
Defendant: Kraff’s Men’s Wear Co. Inc., Daniel P. Johnson, John Doe Companies 1-20
Cause: Copyright Infringement, Federal Trademark Infringement, Federal Unfair Competition, Common Law Trademark Infringement, Common Law Unfair Competition, Intentional Interference with Economic Relations, Breach of Contract
Court: District of Oregon
Judge: Magistrate Judge Paul Papak

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Oregon Copyright Litigation Update – Digital Sound Co. v. Audio and Video Labs

11 Friday Apr 2014

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

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Copyright Infringement, Litigation Update, Paul Papak

Digital Sound Co. et al v. Audio and Video Labs, Inc. et al

Court Case Number: 3:14-cv-00598-PK
File Date: Thursday, April 10, 2014
Plaintiff: Digital Sound Co., Stars for Art Productions FZ LLC
Plaintiff Counsel: Christopher H. Kent, Leslie S. Johnson of Kent & Johnson LLP
Defendant: Audio and Video Labs, Inc., Martin Berz Group, Does 1-10
Cause: Copyright Infringement
Court: District of Oregon
Judge: Magistrate Judge Paul Papak

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Voltage Pictures shifts BitTorrent strategy in Oregon from copyright to state trademark claims

04 Friday Apr 2014

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

≈ 2 Comments

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BitTorrent, Litigation Update, Oregon State Trademark Infringement

Here’s a new twist in the BitTorrent download saga in Oregon. Rather than the typical strategy of pursuing copyright infringement claims in federal court, Voltage Pictures is now going after 50 John Doe defendants in Oregon state court on state trademark claims.

Defendants are alleged to have “without the authorization or consent of plaintiff, used, copied and/or distributed a reproduction, counterfeit and copy of plaintiff’s motion picture bearing plaintiff’s registered trademark VOLTAGE PICTURES.”

It’s a novel strategy, but perhaps with a few flaws. For one, it will be an uphill battle to argue that Defendant’s uploading/downloading of a digital file amounts to distribution that is likely to cause confusion as to source. Notably, a Plaintiff can only recover damages or profits under Oregon state trademark law if the trademark was used with the intent to cause confusion or mistake or to deceive (ORS 647.095 (2)). Similar to the federal “nominative fair use” exemption, a Defendant is permitted to use another party’s trademark to reference that party’s goods or services.

It will be interesting to see how the State Court handles this lawsuit. Stay tuned for updates.

Voltage Pictures, LLC v. Does 1-50

Court Case Number: 14C13823
File Date: Thursday, April 3, 2014
Plaintiff: Voltage Pictures, LLC
Plaintiff Counsel: Carl D. Crowell, Crowell Law
Defendant: Does 1-50
Cause: Oregon State Trademark Infringement
Court: Circuit Court of the State of Oregon for the County of Marion

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Oregon Trade Dress Litigation Update – Marmoset v. The Music Bed

25 Tuesday Mar 2014

Posted by Kenan Farrell in Copyright, District of Oregon, Intellectual Property, Litigation, Oregon, Portland, Trade Dress, Trademark

≈ 4 Comments

Tags

Common Law Trademark Infringement, Common Law Unfair Competition, Copyright Infringement, Litigation Update, Michael W. Mosman, Trade Dress Infringement, Unfair Competition, Voluntary Dismissal

Plenty of thought, time and expense goes into creating a website. Therefore, it has to be pretty upsetting when a direct competitor rips off the “look and feel” of your site. Marmoset

That’s what Marmoset, a specialized boutique music agency based in Portland, Oregon, alleges of The Music Bed, a similar company in Fort Worth, Texas. Check out comparison images in the Complaint or, better yet, go visit the websites yourself.

What do you think? Are the websites too similar? Confusingly similar?

And remember, imitation is the sincerest form of flattery.

Marmoset, LLC v. The Music Bed, LLC

Court Case Number: 3:14-cv-00431-MO
File Date: Monday, March 17, 2014
Plaintiff: Marmoset, LLC
Plaintiff Counsel: Timothy S. DeJong, Jacob S. Gill of Stoll Stoll Berne Lokting & Schlachter PC, Charles F. Moore of Alleman Hall McCoy Russell & Tuttle LLP
Defendant: The Music Bed, LLC
Cause: Trade Dress Infringement, Unfair Competition, Copyright Infringement, Common Law Trademark Infringement, Common Law Unfair Competition
Court: District of Oregon
Judge: Judge Michael W. Mosman

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UPDATE 7/7/2014: A Notice of Voluntary Dismissal Without Prejudice was filed in this lawsuit on 6/6/2014. To date, there have been no discernible changes to either website.

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