Tag Archives: False Designation of Origin

Trademark and Unfair Competition lawsuit filed over expired software license

14 Friday Jul 2017

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

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This lawsuit involves the registered trademarks LEXILE, LEXILE FRAMEWORK, LEXILE ANALYZER and METAMETRICS.

The parties previously had a license by which the Defendants could use Plaintiff’s software, but it apparently expired on June 30, 2017.

MetaMetrics, Inc. v. NWEA et al.

Court Case Number: 3:17-cv-01059-BR
File Date: Thursday, July 6, 2017
Plaintiff: MetaMetrics, Inc.
Plaintiff Counsel: Jeff Pitzer of Pitzer Law
Defendant: NWEA (f/k/a Evaluation Association), Matthew Chapman, Jeff Strickler
Cause: Federal Trademark Infringement, Federal Unfair Competition, False Designation of Origin, False Advertising, Copyright Infringement, Oregon Trademark Infringement, Common Law Trademark Infringement, Oregon Trademark Dilution, Oregon Unlawful Trade Practices Act, Common Law Unfair Competition, Common Law False Advertising, Breach of Contract, Tort of Conversion
Court: District of Oregon
Judge: Anna J. Brown

Complaint:

West Burnside Vape Spot files trademark lawsuit against SE Division VapeSpot

27 Thursday Oct 2016

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

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Since 2013, Plaintiff has operated a Portland vape shop/lounge on West Burnside Street called Vape Spot.

In August 2016, Plaintiff became aware that Defendant had opened a VapeSpot on SE Division Street. Daily instances of confusion and an unsolicited call from Captain Amsterdam regarding Kratom – a product apparently being investigated by the FDA -led to this trademark lawsuit.

Smoke Free, LLC v. Vapespot, LLC

Court Case Number: 3:16-cv-02060-AA
File Date: Wednesday, October 26, 2016
Plaintiff: Smoke Free, LLC
Plaintiff Counsel: Aurelia Erickson of McGaughey Erickson
Defendant: Vapespot, LLC
Cause: False Designation of Origin, Unfair Competition, Common Law Trademark Infringement, Common Law Unfair Competition, State Trademark Dilution, Injury to Business Reputation, Unjust Enrichment
Court: District of Oregon
Judge: Ann L. Aiken

Complaint:

 

BARISTA SERIES files False Designation of Origin Lawsuit against BARISTA BLEND

02 Friday Sep 2016

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

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Since 2008, Plaintiff has produced a line of dairy alternative beverages (for use with coffee, tea, etc.) under the BARISTA SERIES trademark.

Defendant distributes a similar non-dairy alternative under the trademark BARISTA BLEND. However, Plaintiff noticed in 2015 that Defendant’s product also bore the BARISTA SERIES trademark (see Exhibit B).

Apparently unable to resolve their dispute over the last year, this lawsuit seeks damages and an injunction against Defendant’s use of BARISTA SERIES.

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Pacific Foods of Oregon Inc. v. Califia Farms, Inc.

Court Case Number: 3:16-cv-01752-SB
File Date: Thursday, September 1, 2016
Plaintiff: Pacific Foods of Oregon Inc.
Plaintiff Counsel: Scott E. Davis of Klarquist Sparkman, LLP
Defendant: Califia Farms, LLC
Cause: False Designation of Origin, Unfair Competition, Common Law Trademark Infringement, Common Law Unfair Competition
Court: District of Oregon
Judge: Stacie F. Beckerman

Complaint:

Portland Retirement Community files Trademark Lawsuit against Residents Foundation, asserts Banking Violations

05 Thursday May 2016

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

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The Plaintiff in this action, Willamette View, is a 60-year old continuing care retirement community in Portland, Oregon. Plaintiff owns no federal or state trademark registrations.

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Since 1967, the Defendant, Willamette View Foundation, has provided financial management and fiduciary services to Plaintiff’s senior residents.

From its founding in 1967 through January 2016, Willamette View Foundation used its corporate name, Willamette View Foundation, as the trade name with which it held itself out to and conducted business with the public. In February 2016, it began using a new trade name, The Residents Foundation–Willamette View. While there is almost certainly more going on behind the scenes between these two related-but-unrelated organizations, that name change set the stage for the current trademark dispute.

In addition to the trademark quarrel, the Plaintiff asserts that the Defendant may also be in violation of Oregon’s Banking Act.

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Willamette View, Inc. v. Willamette View Foundation dba The Residents Foundation-Willamette View

Court Case Number: 3:16-cv-00778-MO
File Date: Wednesday, May 4, 2016
Plaintiff: Willamette View, Inc.
Plaintiff Counsel: Stuart R. Dunwood, Kaley L. Fendall of Davis Wright Tremaine
Defendant: Willamette View Foundation d/b/a The Residents Foundation-Willamette View
Cause: False Designation of Origin, Common Law Trademark Infringement, Common Law Unfair Competition
Court: District of Oregon
Judge: Michael W. Mosman

Complaint:

 

 

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 Copyright Litigation Update – Versatop Support Systems v. Georgia Expo et al

29 Thursday Oct 2015

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

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This lawsuit involves knockoff “support structures for displays that are used at trade shows, entertainment, educational, political and promotional events.”

Versatop Support Systems, Inc. v. Georgia Expo Inc. et al

Court Case Number: 3:15-cv-02030
File Date: Wednesday, October 28, 2015
Plaintiff: Versatop Support Systems, Inc.
Plaintiff Counsel: David P. Cooper, Owen W. Dukelow of Kolisch Hartwell PC
Defendant: Georgia Expo Inc., Topfinger Equipment (Shenzhen) Co., Ltd.
Cause: Copyright Infringement, False Designation of Origin
Court: District of Oregon
Judge: John Jelderks

Complaint:

Oregon Trademark Litigation Update – Trailers International LLC v. Xiaofei Yang

05 Tuesday May 2015

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

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Vince Webb and his company, Trailers International (formerly UtilityMate), previously filed suit against Zhuhai Sharp-Group Enterprise Co. Ltd. (aka Jumbo Tools & Equipment), a Chinese trading company, for manufacturing counterfeits of its UtilityMate® and UtilitySport® trailers. Jumbo was, at one time, authorized to manufacture trailers for Webb’s company but now it is alleged that Jumbo is making and distributing counterfeits, primarily through Altocraft USA, Inc. Now, Webb is filing suit against XiaoFei Yang, president and CEO of Jumbo.

Trailers International LLC et al v. XiaoFei Yang

Court Case Number: 3:15-cv-00767-SI
File Date: Monday, May 04, 2015
Plaintiff: Trailers International LLC, Vincent L. Webb
Plaintiff Counsel: Stephen J. Joncus and Xavier A. Clark of Klarquist Sparkman LLP
Defendant:XiaoFei Yang
Cause: Copyright Infringement, Trademark Infringement, Trademark Counterfeiting, False Designation of Origin, Unfair Competition (Passing Off), Unfair Business Practices, Conversion, Trade Secret Misappropriation
Court: District of Oregon
Judge: Judge Michael H. Simon

Oregon Trademark Litigation Update – Legit Organics v. Celisac

15 Friday Aug 2014

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

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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

Oregon Trademark Litigation Update – Leatherman Tool Group v. Gogotech II

10 Tuesday Jun 2014

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

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Leatherman Tool Group, an Oregon corporation, manufactures and distributes engineered multi-tools, pocket tools, and knives that are designed for outdoor, tactical, professional, and general use. Leatherman promotes and sells its products to consumers directly both online at leatherman.com, as well as in its retail store, The Leatherman Store, located in Portland, Oregon.

Leatherman is the owner of multiple federal trademark registrations for LEATHERMAN.

Defendant, a New York corporation, operates factoryoutletstore.com, an online retail site that sells multi-tools, pocket tools and knives that are manufactured by Leatherman.

Defendant is neither an authorized distributor nor an authorized reseller of Leatherman’s products, hence the lawsuit.

Leatherman Tool Group, Inc. v. Gogotech II, LLC

Court Case Number: 3:14-cv-00920
File Date: Friday, June 06, 2014
Plaintiff: Leatherman Tool Group, Inc.
Plaintiff Counsel: Stuart R. Dunwoody, Kaley L. Fendall, John F. McGrory Jr. of Davis Wright Tremaine LLP
Defendant: Gogotech II, LLC
Cause: Trademark Infringement, False Designation of Origin, False Advertising, Common Law Unfair Competition, Breach of Contract
Court: District of Oregon
Judge: Paul Papak

Oregon Trademark Litigation Update – iovation v. IOvations

29 Thursday May 2014

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

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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