• About
  • Contact
  • Disclaimer
  • Oregon IP Resources

Oregon Intellectual Property Blog

Oregon Intellectual Property Blog

Tag Archives: Declaratory Judgment

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

≈ Leave a comment

Tags

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

View this document on Scribd

Oregon Copyright Litigation Update – Works Electric v. BOXX

10 Monday Nov 2014

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

≈ Leave a comment

Tags

Declaratory Judgment, Janice M. Stewart, Litigation Update

This litigation is between a company and a prior contractor of the company over the creation of a two-wheel electric motorized vehicle. In June 2014, Defendant BOXX Corporation sent a letter to Plaintiffs alleging legal claims based on violations of confidentiality and non-disclosure obligations, a non-compete covenant, and the Oregon Uniform Trade Secrets Act, as well as the theft of intellectual property of BOXX. The letter also accused Plaintiff Baker of defamation and Copyright Act violations. The letter concluded with a series of demands and promised a lawsuit against Plaintiffs Baker and Works Electric. In response, Plaintiffs brought this Declaratory Judgment action to obtain a declaration that they had not violated BOXX’s rights. BOXX has filed an Answer that alleges several additional facts and includes eleven counterclaims, including several promised in the June cease-and-desist letter.

Works Electric LLC et al v. BOXX Corporation

Court Case Number: 3:14-cv-01773-ST
File Date: Friday, November 07, 2014
Plaintiff: Works Electric LLC, Brad Baker
Plaintiff Counsel: Darian A. Stanford, Phillip J. Nelson of Slinde Nelson Stanford
Defendant: BOXX Corporation
Cause: Declaratory Judgment
Court: District of Oregon
Judge: Magistrate Judge Janice M. Stewart

Complaint:

View this document on Scribd

Answer:

View this document on Scribd

Oregon Trademark Litigation Update – Yeti Enterprises v. Orion Tang

18 Thursday Jul 2013

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

≈ Leave a comment

Tags

Breach of Contract, Breach of the Implied Covenant of Good Faith and Fair Dealing, Common Law Fraud, Common Law Trademark Infringement, Common Law Unfair Competition, Declaratory Judgment, False Advertising, Fraud, Janice M. Stewart, Litigation Update, Trademark Infringement, Unfair Competition

Yeti Enterprises Incorporated v. Orion Tang et al

Court Case Number: 3:13-cv-01203-ST
File Date: Wednesday, July 17, 2013
Plaintiff: Yeti Enterprises Incorporated
Plaintiff Counsel: Daniel C. Occhipinti of Stoel Rives LLP
Defendant: Orion Tang, NPK, LLC
Cause: Trademark Infringement, Unfair Competition, False Advertising, Common Law Trademark Infringement, Common Law Unfair Competition, Fraud, Common Law Fraud, Breach of Contract, Breach of the Implied Covenant of Good Faith and Fair Dealing, Declaratory Judgment
Court:  District of Oregon
Judge: Magistrate Judge Janice M. Stewart

Complaint (removed from Multnomah County Circuit Court):

View this document on Scribd

Response 

View this document on Scribd

 

UPDATED [7/30/14]: The following documents provide more insight into the litigation.

Plaintiffs’ Second Amended Complaint and Counterclaims

View this document on Scribd

Defendants’ Answer and Affirmative Defenses to Plaintiff’s Second Amended Complaint and Counterclaims

View this document on Scribd

 

 

 

Categories

Blog at WordPress.com.

Privacy & Cookies: This site uses cookies. By continuing to use this website, you agree to their use.
To find out more, including how to control cookies, see here: Cookie Policy
  • Follow Following
    • Oregon Intellectual Property Blog
    • Join 147 other followers
    • Already have a WordPress.com account? Log in now.
    • Oregon Intellectual Property Blog
    • Customize
    • Follow Following
    • Sign up
    • Log in
    • Report this content
    • View site in Reader
    • Manage subscriptions
    • Collapse this bar
 

Loading Comments...