Category Archives: Trademark

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

08 Tuesday Mar 2016

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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

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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 Trademark Litigation Update – House Spirits Distillery v. Pilot House Spirits

29 Friday Jan 2016

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

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This trademark dispute involves Plaintiff’s registered HOUSE SPIRITS trademark and Defendant’s recently adopted PILOT HOUSE SPIRITS trademark.

Some background on the lawsuit: Astoria Distillery That Just Changed Its Name Gets Sued Over New Name

House Spirits Distillery LLC v. Pilot House Spirits LLC

Court Case Number: 3:16-cv-00141-BR
File Date: Tuesday, January 26, 2016
Plaintiff: House Spirits Distillery LLC
Plaintiff Counsel: Steven M. Wilker, Eric Beach of Tonkon Torp LLC
Defendant: Pilot House Spirits LLC
Cause: Federal Trademark Infringement
Court: District of Oregon
Judge: Anna J. Brown

Complaint:

TTAB Rules Single Location Restaurant NOT Operating in Interstate Commerce

12 Tuesday Jan 2016

Posted by in Intellectual Property, Litigation, Oregon, Trademark

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The Trademark Trial and Appeal Board recently sustained a Section 2(d) opposition (by retail food giant Subway) to registration of the mark FLATIZZA for “pizza,” finding insufficient evidence that the Applicant, a single location restaurant in Bothell, Washington, operated in interstate commerce prior to the filing of its use-based application to register. Doctor’s Associates Inc. v. Janco, LLC, Opposition No. 91217243 (January 7, 2016) 

If you operate a single location restaurant or business and want to pursue federal trademark registration based on use in interstate commerce, here are some actions to consider based on this ruling:

  • Advertise in a restaurant, business or travel directory that is circulated in interstate commerce
  • Track out-of-state viewers to your website
  • Track out-of-state patrons of your business (via guest register, comment cards, reviews, etc.)
  • Document interactions from out-of-state residents on social media

Performing the above tasks could make all the difference should you have to prove use of your trademark in interstate commerce. In this case, Janco failed to maintain this type of evidence and thus was refused registration of its trademark.

TTAB Ruling:

Oregon Trademark Litigation Update – Webb v. Marlon Recreational Products USA, Ltd. et al

04 Monday Jan 2016

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

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Webb v. Marlon Recreational Products USA, Ltd. et al

Court Case Number: 3:2015-cv-02380
File Date: Tuesday, December 22, 2015
Plaintiff: Vincent L. Webb
Plaintiff Counsel: Stephen J. Joncus of Joncus Law LLC
Defendant: Marlon Recreational Products USA, Ltd. et al
Cause: Violation of the Permanent Injunction, Unfair Competition, False Designation of Origin, Trademark Infringement, Copyright Infringement, Fraud
Court: District of Oregon
Judge: Stacie F. Beckerman

Complaint:

Oregon Trademark Litigation Update – Blue Sky Wellness Studio v. Blue Sky of Portland

15 Tuesday Dec 2015

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Bridgit Beasley, P.C. d/b/a Blue Sky Wellness Studio v. Blue Sky of Portland, LLC

Court Case Number: 3:15-cv-02327
File Date: Monday, December 14, 2015
Plaintiff: Bridgit Beasley, P.C. d/b/a Blue Sky Wellness Studio
Plaintiff Counsel: Thomas E. Scanlon
Defendant: Blue Sky of Portland, LLC
Cause: Federal Unfair Competition, State and Common Law Trademark Infringement, State Unlawful Trade and Business Practices
Court: District of Oregon
Judge: John Jelderks

Complaint:

Oregon Trademark Litigation Update – adidas America v. TRB Acquisitions

12 Thursday Nov 2015

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This adidas lawsuit involves its triangular “Badge of Sport Mark” and “RBK” trademarks. The alleged infringer is a New York-based company and its products are allegedly sold side-by-side with adidas products in retail stores. The Complaint shows a photograph allegedly taken at TJ Maxx.

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adidas America Inc. et al v. TRB Acquisitions LLC

Court Case Number: 3:15-cv-02113
File Date: Tuesday, November 10, 2015
Plaintiff: adidas America Inc., adidas AG, Adidas International Marketing B.V., Reebok International Ltd.
Plaintiff Counsel: Stephen M. Feldman of Perkins Coie LLP
Defendant: TRB Acquisitions LLC
Cause: Federal Trademark Infringement, Federal Unfair Competition, Federal Trademark Dilution, Unfair and Deceptive Trade Practices, Common Law Trademark Infringement, Common Law Unfair Competition, State Trademark Dilution, Injury to Business Reputation
Court: District of Oregon
Judge: Michael H. Simon

Complaint:

Oregon Trademark Litigation Update – adidas America v. Cougar Sport

07 Wednesday Oct 2015

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adidas is back with more “Three-Stripe” litigation, this time against Cougar Sport, a New York-based clothing company selling apparel with four stripes (2 light, 2 dark). adidas has a history of attempting to expand its “Three-Stripe” trademark rights beyond, well, just three stripes. Three can also mean 2 stripes and, if adidas has its way here, 4 stripes.

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The Three-Stripe mark is so famous and distinctive, as adidas frequently reminds us in its Complaint, there must certainly be an argument made that consumers would immediately recognize that 2 and 4-stripe apparel are obviously NOT adidas products.

Earlier this year, fashion designer Marc Jacobs was set to test adidas’ rights to “four stripes,” but adidas voluntarily dismissed the lawsuit shortly after filing the Complaint. Perhaps Cougar Sport should hire Marc Jacobs’ attorneys…

adidas America Inc. et al v. Cougar Sport Inc.

Court Case Number: 3:15-cv-01856-SI
File Date: Wednesday, September 30, 2015
Plaintiff: adidas America Inc., adidas AG
Plaintiff Counsel: Stephen M. Feldman of Perkins Coie LLP
Defendant: Cougar Sport Inc.
Cause: Federal Trademark Infringement, Federal Unfair Competition, Unfair and Deceptive Trade Practices, Common Law Trademark Infringement and Unfair Competition, Federal Trademark Dilution
Court: District of Oregon
Judge: Judge Michael H. Simon

Complaint: 

Oregon Trademark Litigation Update – adidas America et al v. Skechers USA

24 Thursday Sep 2015

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adidas has a long history with Skechers. In 1994, adidas filed suit for trademark infringement over Skechers‘s Karl Kani footwear. The companies entered into a settlement agreement the following year (the “1995 Agreement,” attached below). Under this agreement, Skechers acknowledged that adidas is the exclusive owner of the THREE STRIPE DESIGN, agreed not to use the THREE STRIPE DESIGN or any mark confusingly similar thereto, and agreed to cease distribution of its KARL KANI sport shoe.

Between 2008 and 2013, adidas and Skechers allegedly entered into five separate confidential settlement agreements about infringements and dilutions of the Three-Stripe Mark. This most recent complaint from adidas claims that “notwithstanding the 1995 Agreement and the subsequent 2008-2013 Agreements–and in continuing, blatant disregard of adidas‘s rights–Skechers yet again is . . . selling footwear . . . bearing a confusingly similar imitation of the adidas Marks.”

adidas is especially aggrieved about a shoe that is (allegedly) confusingly similar to their famous Stan Smith shoe and claims that Skechers intends their “Stan Smith Knock-Off” shoe to be confusingly similar to the adidas Trade Dress and offers evidence that the Skechers website included the terms “stan smith” and “adidas original” in the source code.

adidas America Inc. et al v. Skechers USA Inc.

Court Case Number: 3:15-cv-01741-JE
File Date: Monday, September 14, 2015
Plaintiff: adidas America Inc., adidas AG, Adidas International Marketing B.V.
Plaintiff Counsel: Stephen M. Feldman of Perkins Coie LLP
Defendant: Skechers USA Inc.
Cause: Federal Trademark and Trade Dress Infringement, Federal Unfair Competition, Federal Trademark and Trade Dress Dilution, State Trademark Dilution with respect to the Three-Stripe Mark, Unfair and Deceptive Trade Practices, Common Law Trademark Infringement and Unfair Competition, Breach of Contract
Court: District of Oregon
Judge: Magistrate Judge John Jelderks

Complaint:

1995 Agreement:

Oregon Trademark Litigation Update – adidas America v. Forever 21

18 Tuesday Aug 2015

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Adidas has filed a complaint alleging that clothing retailer, Forever 21, and clothing manufacturer/distributor, Central Mills, have been selling counterfeit adidas clothing. In the complaint, adidas alleges Defendants have been importing and selling “apparel bearing three stripes that constitute counterfeit and/or confusingly similar imitations of adidas’s Three-Stripe Mark,” and included pictures of two examples (see Complaint below).

In 2013, Forever 21 and Central Mills were sued by fashion photograher, Mark Hunter, for copyright infringement. Hunter alleged that Defendants used one of his photographs on clothing without authorization. That case was settled out of court less than four months after the complaint was filed.

adidas America Inc. et al v. Forever 21 Inc. et al

Court Case Number: 3:15-cv-01559
File Date: Monday, August 17, 2015
Plaintiff: adidas America Inc., adidas AG
Plaintiff Counsel: Stephen M. Feldman of Perkins Coie LLP
Defendant: Forever 21 Inc., Central Mills Inc.
Cause: Counterfeiting, Federal Trademark Infringement, Federal Unfair Competition, Unfair and Deceptive Trade Practices, Common Law Trademark Infringement and Unfair Competition, Federal Trademark Dilution, State Trademark Dilution
Court: District of Oregon
Judge: Michael H. Simon