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Category Archives: Trademark

Oregon Trademark Litigation Update – InsightsNow v. SuperPsyched

06 Saturday Apr 2013

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

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False Designation of Origin, Litigation Update, Thomas M. Coffin, Trademark Infringement, Unfair Competition, Unlawful Trade Practices

Plaintiff InsightsNow, Inc. is a Corvallis-based company that has been offering a market research service in the consumer packaged goods industry called “BehaviorLens“. Plaintiff’s claimed date of first use in commerce is August 26, 2011. Defendant SuperPsyched is a Colorado based app-maker with an app for tracking student behavior called “BehaviorLENS“. Defendant’s date of first use in commerce is October 11, 2011. In response to an initial cease and desist letter, Defendant apparently made efforts to distinguish its trademark and services but not to the satisfaction of Plaintiff, resulting in this lawsuit.

InsightsNow, Inc. v. SuperPsyched, LLC

Court Case Number: 6:13-cv-00573-TC
File Date: Wednesday, April 03, 2013
Plaintiff: InsightsNow, Inc.
Plaintiff Counsel: Delfina S. Homen, Hillary S. Brooks of Marger Johnson & McCollom PC
Defendant: SuperPsyched, LLC
Cause: Trademark Infringement, False Designation of Origin and Unfair Competition, Unlawful Trade Practices
Court: Oregon District Court
Judge: Magistrate Judge Thomas M. Coffin

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Oregon Trademark Litigation Update – The Coast Distribution System v. Ezra Distributing

16 Saturday Mar 2013

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

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Common Law Dilution, Common Law Trademark Infringement, Common Law Unfair Competition, Dennis J. Hubel, Litigation Update, Trademark Infringement, Unfair Competition

The Coast Distribution System Inc. v. Ezra Distributing, Inc. et al

Court Case Number: 3:13-cv-00451-HU
File Date: Friday, March 15, 2013
Plaintiff: The Coast Distribution System Inc.
Plaintiff Counsel: Charles H. DeVoe, Thomas James Romano of Kolisch Hartwell, PC
Defendant: Ezra Distributing, Inc., Ezra Retail LLC
Cause: Trademark Infringement and Unfair Competition; Common Law Trademark Infringement, Unfair Competition, and Dilution
Court: Oregon District Court
Judge: Magistrate Judge Dennis J. Hubel

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Oregon Trademark Litigation Update – Leonard D. Duboff v. University of Chicago

15 Friday Mar 2013

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

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Litigation Update, Michael H. Simon, Trademark Infringement

Here’s a trademark dispute involving book titles. Plaintiff writes a series of industry-focused legal education books called “The Law, in Plain English for [insert industry]” (some examples are Photographers, Restaurants, Writers). Essentially, the books are an attempt to help regular folks understand the law that applies to their industry, explained not with legal jargon but “in plain English.”

Defendants publish a book “Legal Writing in Plain English,” frequently used by law students as a textbook in their legal writing courses. It teaches future lawyers (and current lawyers) to write laws and contracts that regular folks can understand, not written in legal jargon but “in plain English.”

Are the books sold in the same marketplace or two independent marketplaces? Industry folks buy one set of books, attorneys buy the other, presumably all for the greater good of comprehensible law. Authors suing authors, lawyers suing lawyers…this could get interesting. Stay tuned for updates.

Leonard D. Duboff v. University of Chicago et al

Court Case Number: 3:13-cv-00436-SI
File Date: Thursday, March 14, 2013
Plaintiff: Leonard D. Duboff
Plaintiff Counsel: Anthony Edward McNamer, Deborah E. Gumm of McNamer and Company, PC
Defendant: University of Chicago, Lawprose, Inc., Bryan A. Garner
Cause: Trademark Infringement
Court: Oregon District Court
Judge: Judge Michael H. Simon

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Oregon Trademark Litigation Update – Naked Wines LLC v. Mustache Mentors, Inc.

09 Saturday Mar 2013

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

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False Designation of Origin, Litigation Update, Marco A. Hernandez, Trademark Infringement, Unfair Competition, Unlawful Trade Practices

Hood River-based Naked Winery is pursuing a new San Francisco-based winemaker, Naked Rebel Winery, for trademark infringement. It’s not necessarily a slam-dunk case, as there are several other “naked-formative” trademarks used in connection with wine.  Naked Rebel filed it’s own trademark application back in December although there’s been no action yet by a Trademark Examiner. However, based on rejections received in other “naked” applications, it seems the Naked Rebel crew may have to overcome both this lawsuit and then a 2(d) refusal in order to successfully use and register their trademark.

Trademark practitioners, do you prefer to file a trademark complaint prior to an Examiner’s review of a pending trademark application or do you wait for an Examiner’s 2(d) refusal? I’m curious as to your thoughts in either direction.

Naked Wines LLC v. Mustache Mentors, Inc. et al

Court Case Number: 3:13-cv-00402-HZ
File Date: Friday, March 08, 2013
Plaintiff: Naked Wines LLC
Plaintiff Counsel: Hillary A. Brooks, Delfina S. Homen of Marger Johnson & McCollom, PC
Defendant: Mustache Mentors, Inc., Mustache Mentors LLC
Cause: Trademark Infringement, False Designation of Origin and Unfair Competition, Unlawful Trade Practices
Court: Oregon District Court
Judge: Judge Marco A. Hernandez

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Oregon Trademark Litigation Update – Crave Bake Shop v. Crave

08 Friday Mar 2013

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

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Anna J. Brown, Declaratory Judgment of Non-Infringement, Litigation Update

Is the nation large enough for two bakeries with the word “Crave” in the title? Crave Bake Shop, of Lake Oswego, Oregon, thinks so…and filed this Declaratory Judgment action to get a San Francisco-based Crave off their back. Stay tuned.

Crave Bake Shop, LLC v. Crave, LLC

Court Case Number: 3:13-cv-00392-BR
File Date: Thursday, March 07, 2013
Plaintiff: Crave Bake Shop, LLC
Plaintiff Counsel: Elizabeth A. Tedesco Milesnick of Miller Nash LLP
Defendant: Crave, LLC
Cause: Declaratory Judgment of Non-Infringement
Court: Oregon District Court
Judge: Judge Anna J. Brown

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Oregon Trademark Litigation Update – Pacwest Development, LLC v. Pacwest II, L.L.C.

21 Thursday Feb 2013

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

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Ann L. Aiken, Federal Unfair Trade Practices, Litigation Update, State Trademark Dilution, Trademark Infringement, Unfair Trade Practices

Pacwest Development, LLC v. Pacwest II, L.L.C.

Court Case Number: 6:13-cv-00300-AA
File Date: Wednesday, February 20, 2013
Plaintiff: Pacwest Development, LLC
Plaintiff Counsel: Todd R. Johnston of Hershner Hunter LLP
Defendant: Pacwest II, L.L.C.
Cause: Trademark Infringement, Federal Unfair Trade Practice, Unfair Trade Practice, Dilution
Court: Oregon District Court
Judge: Chief Judge Ann L. Aiken

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Oregon Trademark Litigation Update – Slep-Tone Entertainment Corporation v. The Peacock Bar & Grill East

17 Sunday Feb 2013

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

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

Slep-Tone Entertainment Corporation v. The Peacock Bar & Grill East et al

Court Case Number: 6:13-cv-00281-TC
File Date: Saturday, February 16, 2013
Plaintiff: Slep-Tone Entertainment Corporation
Plaintiff Counsel: Franklin J. Seibert of F.J. Seibert LLC
Defendant: The Peacock Bar & Grill East, SKMJMM LLC
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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Oregon Trademark Litigation Update – Slep-Tone Entertainment Corporation v. Frank-N-Steins Pub et al

16 Saturday Feb 2013

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

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Ann L. Aiken, Common Law Passing Off, Litigation Update, Trademark Infringement, Unfair Competition, Unlawful Trade Practices

Slep-Tone Entertainment Corporation v. Frank-N-Steins Pub et al

Court Case Number: 6:13-cv-00279-AA
File Date: Friday, February 15, 2013
Plaintiff: Slep-Tone Entertainment Corporation
Plaintiff Counsel: Carl D Crowell of Crowell Law, Franklin J. Seibert of Franklin Jason Seibert
Defendant: Frank-N-Steins Pub, EET L.L.C.
Cause: Trademark Infringement, Unfair Competition, Unlawful Trade Practices, Common Law Passing Off
Court: Oregon District Court
Judge: Chief Judge Ann L. Aiken

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Oregon Trademark Litigation Update – Slep-Tone Entertainment Corporation v. Harrison Bar & Grill

15 Friday Feb 2013

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

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

Slep-Tone Entertainment Corporation v. Harrison Bar & Grill et al

Court Case Number: 6:13-cv-00269-TC
File Date: Thursday, February 14, 2013
Plaintiff: Slep-Tone Entertainment Corporation
Plaintiff Counsel: Carl D Crowell of Crowell Law, Franklin J. Seibert of F.J. Seibert, LLC
Defendant: Harrison Bar & Grill, Yeung’s Investment 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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Nike Awarded ‘Nike.Ru’ Domain Name in Russian Trademark Dispute

21 Monday Jan 2013

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

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Nike, Russia

Beaverton, Oregon-based Nike, Inc. was awarded the nike.ru domain name by the Moscow Commercial Court, as reported by the Russian Legal Information Agency.

The court ruled that Russian businessman Stas Drugalyov, who registered the nike.ru domain name, hadn’t used it properly. Nike’s attorney, Anton Sergo, stated that Drugalyov has never owned the trademark, adding that the domain does not reflect his or the registrar’s name.

The verdict can be appealed within 30 days. Until that time, Nike will continue using its old URL: www.nike.com/ru/ru_ru.

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