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

03 Thursday Mar 2016

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

Tags

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 “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:

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Oregon Trademark Litigation Update – adidas America v. TRB Acquisitions

12 Thursday Nov 2015

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

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Adidas, Common Law Trademark Infringement, Common Law Unfair Competition, Federal Trademark Dilution, Federal Trademark Infringement, Federal Unfair Competition, Injury to Business Reputation, Litigation Update, Michael H. Simon, State Trademark Dilution, Unfair and Deceptive Trade Practices

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.

Screen Shot 2015-11-12 at 8.21.22 AM

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:

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

24 Thursday Sep 2015

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

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Common Law Trademark Infringement, Common Law Trademark Infringement and Unfair Competition, Common Law Unfair Competition, Federal Trademark Dilution, Federal Trademark Infringement, Federal Unfair Competition, John Jelderks, State Trademark Dilution, Trade Dress Infringement, Trademark Infringement, Unfair and Deceptive Trade Practices, Unfair Competition, Unfair Trade Practices

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:

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1995 Agreement:

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Oregon Trademark Litigation Update – adidas America v. Forever 21

18 Tuesday Aug 2015

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

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Common Law Trademark Infringement, Common Law Trademark Infringement and Unfair Competition, Common Law Unfair Competition, Federal Trademark Dilution, Federal Trademark Infringement, Federal Unfair Competition, Michael H. Simon, State Trademark Dilution, Trademark Counterfeiting, Trademark Infringement, Unfair and Deceptive Trade Practices, Unfair Competition, Unfair Trade Practices

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

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Oregon Trademark Litigation Update – Control Solutions v. Microdaq.com

02 Saturday May 2015

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

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Civil Action by Private Party, Common Law Trademark Infringement, Federal False Designation of Origin, Injunctive Relief, Intentional Interference with Economic Relations, Interference with Prospective Business Advantage, Misrepresentation, Paul Papak, Remedies for Infringement, Trademark Counterfeiting, Trademark Infringement, Unlawful Trade Practices

Control Solutions is in the business of selling certified, calibrated thermometers and data “loggers,” devices that record temperature readings over time. MicroDAQ.com was allegedly running Google Adwords campaigns, such that an internet user searching on of Control Solutions’ trademarks, trade names and/or product names/numbers would receive as a search result a reference and hyperlink to MicrDAQ’s website and purchasing system instead of Control Solutions’. In March 2015, MicroDAQ.com’s sales & marketing manager replied to a cease and desist letter. In the reply, the manager admitted to running at least two such campaigns and promised to stop the campaigns. Control Solutions claims that the ad campaigns resulted in lost sales as well as lost future revenue since a portion of the company’s revenue is derived from recertifying devices sold to customers.

Control Solutions Inc. v. Microdaq.com Inc. et al

Court Case Number: 3:15-cv-00748-PK
File Date: Friday, May 01, 2015
Plaintiff: Control Solutions Inc.
Plaintiff Counsel: Gano D. Lemoine III of Lemoine Law Firm
Defendant: Microdaq.com Inc., Does 1-10
Cause: Unlawful Business/Trade Practices, Civil Action by Private Party, Trademark Counterfeiting, Remedies for Infringement, Injunctive Relief, Interference with Prospective Business Advantage, Intentional Interference with Economic Relations, Common Law Trademark Infringement, Trademark Infringement, Federal Statutory False Designation of Origin, Misrepresentation in Commercial Advertising or Promotion
Court: District of Oregon
Judge: Magistrate Judge Paul Papak

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Oregon Trademark Litigation Update – Kool Pak v. Kool Trans

26 Friday Dec 2014

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

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Common Law Trademark Infringement, Federal Statutory False Designation of Origin, Litigation Update, Michael H. Simon, Trademark Infringement

Plaintiff Kool Pak, based in Lake Oswego, Oregon, seeks to protect its family of “Kool” trademarks in connection with transcontinental refrigerated trucking services. Plaintiff has used the Kool Pak mark for over 45 years.

Defendant, headquartered in Salt Lake City, Utah, entered the refrigerated trucking market in June 2014, operating under the “Kooltrans” mark.

Unable to negotiate an agreeable resolution via attorney dealings, the Plaintiff now seeks the Court’s determination of whether there is a likelihood of confusion between the parties’ marks.

Kool Pak LLC v. Kool Trans LLC

Court Case Number: 3:14-cv-02036-SI
File Date: Tuesday, December 23, 2014
Plaintiff: Kool Pak LLC
Plaintiff Counsel: J. Peter Staples, Susan D. Pitchford of Chernoff Vilhauer McClung & Stenzel LLP
Defendant: Kool Trans LLC
Cause: Trademark Infringement, Federal Statutory False Designation of Origin, Common Law Trademark Infringement
Court: District of Oregon
Judge: Judge Michael H. Simon

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Oregon Trademark Litigation Update – Gilt Inc. v. Gilt Groupe Inc.

15 Wednesday Oct 2014

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

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Anna J. Brown, Cancellation of Trademarks, Common Law Trademark Infringement, Common Law Unfair Competition, Federal Unfair Competition, Infringement of Unregistered Mark, Injury to Business Reputation, Litigation Update, State Trademark Dilution, Unjust Enrichment

Plaintiffs have used the GILT trademark in connection with the sale of unique, sustainable, and hand-selected pieces of vintage and antique jewelry and related items since 1994. Around 2010-2011, Defendant began using the GILT mark in connection with jewelry, first for the sale of modern jewelry and later, in or about 2011-2012, in connection with the sale of estate jewelry.

In April 2012, Plaintiffs filed applications with the United States Patent and Trademark Office (“USPTO”) to register GILT and GILT JEWELRY for “mail order services featuring jewelry; retail jewelry stores.” The USPTO issued office actions refusing registration, citing a likelihood of confusion with Defendant’s U.S. Trademark Registration Nos. 3920768 and 3967967 for GILT MAN and GILT MANUAL in connection with “On-line retail store services featuring luxury and fashion clothing, apparel, shoes, belts, clothing accessories, pens, lighters, desk sets, tie clips, cuff links, skin care products, jewelry, sports equipment, wine, liquor, and art sold at discount prices.”

Accordingly, Plaintiffs have brought this action for trademark infringement and several other claims, including cancellation of Defendant’s trademark registrations.

Gilt Inc. et al v. Gilt Groupe Inc.

Court Case Number: 3:14-cv-01609-BR
File Date: Friday, October 10, 2014
Plaintiff: Gilt Inc., Paula Bixel
Plaintiff Counsel: John F. Neupert, Elizabeth A. Tedesco Milesnick of Miller Nash LLP
Defendant: Gilt Groupe Inc.
Cause: Infringement of Unregistered Mark, Federal Unfair Competition, Common Law Trademark Infringement, Common Law Unfair Competition, State Trademark Dilution, Injury to Business Reputation, Unjust Enrichment, Cancellation of Trademarks
Court: District of Oregon
Judge: Judge Anna J. Brown

Complaint:

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Oregon Trademark Litigation Update – Legit Organics v. Celisac

15 Friday Aug 2014

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

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

Legit Organics LLC v. Celisac LLC

Court Case Number: 3:14-cv-01297
File Date: Wednesday, August 13, 2014
Plaintiff: Legit Organics LLC
Plaintiff Counsel:
Defendant: Celisac LLC
Cause: Federal Trademark Infringement, False Designation of Origin, Common Law Trademark Infringement, Common Law Unfair Competition
Court: District of Oregon
Judge: Michael W. Mosman

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Oregon Trademark Litigation Update – AutoBidMaster v. Alpine Auto Gallery et al

11 Friday Jul 2014

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

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Action to Pierce Corporate Veil, Common Law Trademark Infringement, Common Law Unfair Competition, Federal Cyberpiracy, Federal Trademark Dilution, Federal Trademark Infringement, Federal Unfair Competition, John V. Acosta, Litigation Update, Unjust Enrichment

Plaintiff operates an online auction marketplace at the domain autobidmaster.com. Defendant, a competitor, began using the domain autobidmaser.com and autobidmater.com to redirect traffic to its own website.

AutoBidMaster LLC v. Alpine Auto Gallery LLC et al

Court Case Number: 3:14-cv-01083
File Date: Monday, July 07, 2014
Plaintiff: AutoBidMaster LLC
Plaintiff Counsel: Nathaniel L. Funk of Barker Martin PS
Defendant: Alpine Auto Gallery LLC, Vehiko LLC, Edward Agabs, John Does 1-5
Cause: Federal Trademark Infringement, Federal Trademark Dilution, Federal Cyberpiracy, Federal Unfair Competition, Common Law Trademark Infringement, Common Law Unfair Competition, Unjust Enrichment, Action to Pierce Corporate Veil
Court: District of Oregon
Judge: John V. Acosta

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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 Intellectual Property Blog

Tag Archives: Common Law Trademark Infringement

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

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

Oregon Trademark Litigation Update – adidas America v. TRB Acquisitions

adidas America Inc. et al v. TRB Acquisitions LLC

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

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

Oregon Trademark Litigation Update – adidas America v. Forever 21

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

Oregon Trademark Litigation Update – Control Solutions v. Microdaq.com

Control Solutions Inc. v. Microdaq.com Inc. et al

Oregon Trademark Litigation Update – Kool Pak v. Kool Trans

Kool Pak LLC v. Kool Trans LLC

Oregon Trademark Litigation Update – Gilt Inc. v. Gilt Groupe Inc.

Gilt Inc. et al v. Gilt Groupe Inc.

Oregon Trademark Litigation Update – Legit Organics v. Celisac

Legit Organics LLC v. Celisac LLC

Oregon Trademark Litigation Update – AutoBidMaster v. Alpine Auto Gallery et al

AutoBidMaster LLC v. Alpine Auto Gallery LLC et al

Oregon Trademark Litigation Update – iovation v. IOvations

iovation, Inc. v. IOvations, Inc.