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Tag Archives: Declaratory Judgment of Non-Infringement

Bob’s Red Mill rejects adoption of Gluten-Free Certification Mark

06 Wednesday Jun 2018

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

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Declaratory Judgment of Non-Infringement, Marco A. Hernandez

This trademark action sees Bob’s Red Mill Natural Foods, a popular producer of natural, certified organic, and gluten-free milled grain products, seeking a declaratory judgment of non-infringement of a “Certified Gluten-Free” certification mark owned by the Gluten Intolerance Group of North America.

Bob’s Red Mill has been producing gluten-free products for over 30 years, using several indicators over time to denote the gluten-free quality. They currently use the following indicator on packaging and on their website:

On May 17, 2018, Bob’s Red Mill received the following email asking that it stop using its own indicator, become certified with the “Gluten-Free Certification Organization,” and adopt the Defendant’s Certification Mark:

Bob’s Red Mill notes in the Complaint that it has never claimed certification by any outside organization and that “[t]here is no federal standard for ‘gluten-free.'”

Rejecting those requests, Bob’s Red Mill brings this lawsuit to obtain a judgment declaring that it may use its own gluten-free indicator, without having to seek the permission of, or pay money to, the Gluten Intolerance Group.

Stay tuned for updates.

Bob’s Red Mill Natural Foods, Inc. v. Gluten Intolerance Group of North America

Court Case Number: 3:18-cv-960-HZ
File Date: Thursday, May 31, 2018
Plaintiff: Bob’s Red Mill Natural Foods, Inc.
Plaintiff Counsel: Clifford S. Davidson of Sussman Shank LLP
Defendant: Gluten Intolerance Group of North America
Causes: Declaratory Judgment of Non-Infringement
Court: District of Oregon
Judge: Marco A. Hernandez

Complaint:

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Oregon hosts trademark dispute between “Highbrow” websites

30 Wednesday Mar 2016

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

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Cancellation of Trademark, Declaratory Judgment of Non-Infringement, Litigation Update, Stacie F. Beckerman, State Declaratory Judgment of Non-Infringement and No Unfair Competition

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:

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Exhibit 5:

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

21 Monday Mar 2016

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

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Cancellation of Trademark Registration, Declaratory Judgment of Non-Infringement, Litigation Update, Oregon Unlawful Trade Practices Act, Paul Papak, Permanent Injunction

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:

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City of Portland Defends its Historic Sign in Federal Court

21 Tuesday Jul 2015

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

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Declaratory Judgment, Declaratory Judgment of Non-Infringement, Declaratory Judgment of Unenforceability, Marco A. Hernandez, Portland, Portland Sign, Trademark, Trademark Infringement

The City of Portland bought the famous Portland Oregon sign – commonly known as the “White Stag” sign or the “Made in Oregon” sign – Portland's state trademark registration in the signin 2010. The following year, in July 2011, the city registered its trademark with the state of Oregon. It appears that the City started charging license fees for commercial use of images of the famous sign around January 2013. Vintage Roadside is an Oregon company that aims “to bring back to light the authentic advertising graphics and logos of [] bygone businesses” by giving “people the opportunity to indulge in one of life’s great pleasures: the gift shop souvenir!” Vintage Roadside also runs an Etsy store that sells photographs of vintage roadside attractions.

According to the Complaint, the City of Portland’s attorneys contacted Vintage Roadside and asserted that their photograph violated the City’s trademark in the sign. Vintage Roadside filed a preemptive lawsuit, seeking a declaratory judgment, in the Multnomah County Circuit. Plaintiff alleges both that the City’s state trademark is unenforceable and that Plaintiff is not infringing and has not infringed any enforceable trademark relating to the sign. The City has removed the case to federal court. The heart of Plaintiff’s argument is that the City of Portland incorrectly filed its Vintage Roadside Etsy Screenshottrademark application. The recitation of services in the state trademark registration (as shown above, and on p. 9 of the Complaint below) is awkward. The only good or service listed on the application is, “The sign is a visual icon associated with Portland, and is seen all over the world when major events come to Portland.” In the space available to explain the mode or manner in which the mark is used, the City of Portland simply wrote, “An historical landmark of Portland, Oregon.” Vintage Roadside is alleging that the City of Portland was not using the mark in connection with the sale of goods and services and falsely certified that the mark was in use.

More updates to come as the case progresses…

Vintage Roadside LLC v. City of Portland

Court Case Number: 3:15-cv-01346
File Date: Monday, July 20, 2015
Plaintiff: Vintage Roadside LLC
Plaintiff Counsel: Robert A. Swider of Swider Haver LLP
Defendant: City of Portland
Defendant Counsel: J. Scott Moede and Simon Whang of Portland City Attorney’s Office; Shawn J. Kolitch of Kolisch Hartwell, PC
Cause: Unenforceability of Trademark, Non-Infringement of Trademark
Court: District of Oregon
Judge: Judge Marco A. Hernandez

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Oregon Trademark Litigation Update – Killer Burger v. Grindhouse Holdings

03 Wednesday Dec 2014

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

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Declaratory Judgment of Non-Infringement, Litigation Update, Michael H. Simon

This lawsuit involving the popular Portland-based hamburger joint and a Georgia-based hamburger restaurant was covered in gleeful pun-filled fashion by the Oregonian here.  I’ll update the story if there are any significant legal filings. In the meantime, read the Complaint below and then click over to the Oregonian story.

Killer Burger Inc. v. Grindhouse Holdings LLC

Court Case Number: 3:14-cv-01913-SI
File Date: Monday, December 01, 2014
Plaintiff: Killer Burger Inc.
Plaintiff Counsel: Elizabeth A. Tedesco Milesnick of Miller Nash LLP
Defendant: Grindhouse Holdings LLC
Cause: Declaratory Judgment of Non-Infringement
Court: District of Oregon
Judge: Judge Michael H. Simon

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Oregon Trademark Litigation Update – CTS Wholesale v. South Bay Trading

15 Wednesday Jan 2014

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

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Declaratory Judgment of Non-Infringement, Litigation Update

Trademark AbstractThis is a declaratory judgment action by which the Plaintiff, Salem-based CTS Wholesale, hopes to obtain the Court’s judgment that it is not liable for infringing two of Defendant’s federal trademark registrations. The Defendant, a California-based sunglasses producer, had previously filed a lawsuit in California which was dismissed on January 13 for lack of personal jurisdiction. Plaintiff filed this Complaint for Declaratory Judgment on the same day the California lawsuit was dismissed, presumably hoping for a “home court advantage.”

As general information, a “declaratory judgment” is a judgment of a court which determines the rights of parties without ordering anything be done or awarding damages.

CTS Wholesale, LLC v. South Bay Trading, Inc.

Court Case Number: 6:14-cv-00069-AA
File Date: Monday, January 13, 2014
Plaintiff: CTS Wholesale, LLC
Plaintiff Counsel: Carl D. Crowell of Crowell Law
Defendant: South Bay Trading, Inc.
Cause: Declaratory Judgment of Non-Infringement
Court: District of Oregon
Judge: Chief Judge Ann L. Aiken

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Oregon Trademark Litigation Update – Upsource, LLC v. Upsource, Inc.

21 Monday Oct 2013

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

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Declaratory Judgment of Non-Infringement, Janice M. Stewart, Litigation Update

This trademark dispute is between Upsource, LLC, an Oregon-based internet marketing company and Upsource, Inc., a Massachusetts-based call center and customer service outsourcing company, over the use rights to the mark Upsource and the domain name upsource.com. In response to a recent cease-and-desist letter, the Oregon-based Upsource, LLC, seeks a declaration that its use of the Upsource mark and upsource.com domain name is not violative of the rights of Upsource the call center.

Upsource, LLC v. Upsource, Inc.

Court Case Number: 3:13-cv-01862-ST
File Date: Friday, October 18, 2013
Plaintiff: Upsource, LLC
Plaintiff Counsel: Phil A. Nelson of Slinde & Nelson LLC
Defendant: Upsource, Inc.
Cause: Declaratory Judgment of Non-Infringement
Court: District of Oregon
Judge: Magistrate Judge Janice M. Stewart

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Crave Bake Shop Changes Name, Settles Trademark Lawsuit

21 Tuesday May 2013

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

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

Two months ago, Lake Oswego-based Crave Bake Shop filed a Declaratory Judgment of Non-Infringement action to preserve the right to use the “Crave” trademark in connection with gluten-free baked goods. A settlement has apparently been reached with San Francisco-based Crave bakery and Crave Bake Shop will now become Kyra’s Bake Shop.

More information, including background on the parties, is available from the Portland Tribune. While the terms of the settlement are undisclosed, Kyra Bussanich, owner of Crave Bake Shop, provides some insight into her future naming plans.

“The new name will start transitioning this summer…With my cookbook about to be released and our new line of dry mixes and the expansion plans on the horizon, I want to funnel all the goodwill I have built up to be associated with my new Kyra’s Bake Shop name as I move forward. Of course, I will retain the trademark on Crave Bake Shop and the website until people are used to KBS.”

Notice of Dismissal:

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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 – Hearthside Food Solutions, LLC v. Bibiji Inderjit Kaur Puri

14 Friday Oct 2011

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

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Declaratory Judgment as to Damages, Declaratory Judgment of Non-Infringement

Hearthside Food Solutions, LLC v. Bibiji Inderjit Kaur Puri

Plaintiff Hearthside Food Solutions, the “largest privately-owned bakery in the United States,” has turned to the Oregon federal judiciary for assistance in sorting out a trademark dispute with the widow of Yogi Bhajan. Facing accusations of infringement from the widow and unable to successfully negotiate an amicable compromise, Plaintiff has filed for a Declaratory Judgment of Non-Infringement for their PEACE CEREAL, GOLDEN TEMPLE and YOGI marks.

We’ll have to wait for Defendant’s Answer/Counterclaims for more information but this case probably arises from the larger dispute over “The Fight For Yogi Bhajan’s Empire.”  Marketing moves quicker than legal it seems as Plaintiff has already moved to rebrand its Yogi brand products:

The full Complaint is below. Stay tuned to the Oregon Intellectual Property Law Blog for updates as the case proceeds.

“If you want to learn something, read about it.
If you want to understand something, write about it.
If you want to master something, teach it.” Yogi Bhajan

Court Case Number:    3:11-cv-01238-HU
File Date:    Thursday, October 13, 2011
Plaintiff:     Hearthside Food Solutions, LLC
Plaintiff Counsel:     Kenneth R. Davis, II, Parna A. Mehrbani of Lane Powell, PC
Defendant:     Bibiji Inderjit Kaur Puri
Cause:     Declaratory Judgment of Non-Infringement of the Peace Mark; Declaratory Judgment of Non-Infringement of the Golden Temple Mark; Declaratory Judgment of Non-Infringement of the Yogi Mark
Court:    Oregon District Court
Judge:     Magistrate Judge Dennis J. Hubel

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