• About
  • Contact
  • Disclaimer
  • Oregon IP Resources

Oregon Intellectual Property Blog

Oregon Intellectual Property Blog

Tag Archives: False Designation of Origin

prAna vs. apana…are you confused?

12 Thursday Jul 2018

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

≈ Leave a comment

Tags

Common Law False Advertising, Common Law Trademark Infringement, Common Law Unfair Competition, False Designation of Origin, Federal Trademark Infringement, Federal Unfair Competition, Oregon Unfair Trade Practices Act, Unfair Trade Practices, Unjust Enrichment, Yoga, Youlee Yim You

The Plaintiff in this trademark lawsuit sells “sustainable clothing for yoga, travel, and outdoor adventure enthusiasts” using the PRANA word mark and logo. The PRANA trademark has been used since as early as 1992, and even this non-yogi is aware of the well-known brand.

The Defendants are accused of selling yoga apparel under the confusingly similar name “apana,” coupled with a logo that Plaintiff feels is confusingly similar to prAna’s distinctive logo design.

Here are the trademarks…you be the judge:

Of course, we’re dealing with yoga, so the Complaint was bound to get a little weird:

“Like “prana,” “apana” is also well-known to those who practice yoga, and is closely related as the balancing vayu to the prana-vayu. It is situated in the pelvic floor, and reflects energy that moves downwards and outwards.” “prana and apana are opposing, yet balanced forces. Where ‘prana’ regulates the intake of particles and energy, ‘apana’ is responsible for the elimination of the unabsorbed residues.” Assuming regular yoga folks know all this, wouldn’t that be an argument against confusion?

What do you think…are the trademarks confusingly similar? Sound off in the comments below and stay tuned for updates. This one could get interesting.

prAna Living, LLC v. IFG Corp. et al.

Court Case Number: 3:18-cv-01174-YY
File Date: Monday, July 2, 2018
Plaintiff: prAna Living, LLC
Plaintiff Counsel: Nicolas F. Aldrich, Angela E. Addae of Schwabe, Williamson & Wyatt, P.C.
Defendant: IFG Corp., Adjmi Apparel Group LLC
Causes: Federal Trademark Infringement, False Designation of Origin, Federal Unfair Competition, Common Law Trademark Infringement, Common Law False Advertising, Common Law Unfair Competition, Unfair Trade Practices, Unjust Enrichment
Court: District of Oregon
Judge: Youlee Yim You

Complaint:

View this document on Scribd

Pacific Fence & Wire Company files lawsuit against Pacific NW Fence & Deck over use of PACIFIC trademark

27 Wednesday Jun 2018

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

≈ Leave a comment

Tags

False Designation of Origin, Federal Trademark Dilution, Federal Trademark Infringement, Federal Unfair Competition, Paul Papak

Plaintiff Pacific Fence & Wire Company, an Oregon corporation based in Clackamas, Oregon, has used its PACIFIC trademark in connection with fences, fencing materials, and fencing services since as early as 1921.

Plaintiff brings this action because the Defendants are allegedly willfully infringing Plaintiff’s PACIFIC trademark by using the trademark PACIFIC NW FENCE & DECK to advertise and provide fencing services and by using the domain name pacificnwfenceanddeck.com.

Defendants apparently agreed to discontinue use of their trademark in 2016, temporarily stopped use in 2017-2018, but have since revived their use of the allegedly infringing trademark, hence this lawsuit.

Stay tuned for updates.

Pacific Fence and Wire Company v. M&M Pacific NW Contracting LLC et al.

Court Case Number: 3:18-cv-01106-PK
File Date: Monday, June 25, 2018
Plaintiff: Pacific Fence and Wire Company
Plaintiff Counsel: Owen W. Dukelow, David P. Cooper of Kolisch Hartwell, P.C.
Defendant: M&M Pacific NW Contracting LLC, Mike Wormington, Melissa K. Garris
Causes: Federal Trademark Infringement, Federal Unfair Competition, False Designation of Origin, Dilution
Court: District of Oregon
Judge: Paul Papak

Complaint:

View this document on Scribd

 

Breach of Contract over Moisturizing Personal Lubricant Leads to Lawsuit

06 Monday Nov 2017

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

≈ Leave a comment

Tags

Breach of Contract, Breach of Fiduciary Duty, Breach of Good Faith and Fair Dealing, False Designation of Origin, Intentional Interference with Economic Relations, Professional Negligence, Trademark Infringement, Unlawful Business Practices, Unlawful Trade Practices

The Plaintiff, a Eugene, Oregon-based manufacturer of natural and organic intimacy and feminine hygiene products, “brings this action because Defendants have conspired to sabotage [Plaintiff]’s distribution in Canada, and then to use [Plaintiff]’s proprietary, confidential business information and intellectual property to launch a brand of products nearly identical to those marketed and sold by [Plaintiff].”

Plaintiff sells moisturizing personal lubricant products under the brand names RESTORE, ALMOST NAKED and GUILTY PLEASURE.

The dispute arises from a contractual relationship gone bad. See the Complaint (below) for the details.

Good Clean Love, Inc. v. Aurium Pharma Inc. et al

Court Case Number: 6:17-cv-01712-JR
File Date: October 26, 2017
Plaintiff: Good Clean Love, Inc.
Plaintiff Counsel: David P. Cooper, Owen W. Dukelow, Desmond J. Kidney of Kolisch Hartwell, P.C.
Defendants: Aurium Pharma Inc., Rowland Global LLC, Edward Rowland
Causes: Trademark Infringement, False Designation of Origin, Breach of Contract, Intentional Interference with Economic Relations, Unlawful Business Practices, Unlawful Trade Practices, Breach of Good Faith and Fair Dealing, Breach of Fiduciary Duty, Professional Negligence
Court: District of Oregon
Judge: Jolie A. Russo

Complaint:

View this document on Scribd

Trademark and Unfair Competition lawsuit filed over expired software license

14 Friday Jul 2017

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

≈ Leave a comment

Tags

Anna J. Brown, Breach of Contract, Common Law False Advertising, Common Law Trademark Infringement, Common Law Unfair Competition, Copyright Infringement, False Advertising, False Designation of Origin, Federal Trademark Infringement, Federal Unfair Competition, Oregon Trademark Infringement, Oregon Unlawful Trade Practices Act, State Trademark Dilution, Tort of Conversion

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:

View this document on Scribd

West Burnside Vape Spot files trademark lawsuit against SE Division VapeSpot

27 Thursday Oct 2016

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

≈ Leave a comment

Tags

Ann L. Aiken, Common Law Trademark Infringement, Common Law Unfair Competition, False Designation of Origin, Injury to Business Reputation, State Trademark Dilution, Unfair Competition, Unjust Enrichment

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:

View this document on Scribd

 

BARISTA SERIES files False Designation of Origin Lawsuit against BARISTA BLEND

02 Friday Sep 2016

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

≈ Leave a comment

Tags

Common Law Trademark Infringement, Common Law Unfair Competition, False Designation of Origin, Stacie F. Beckerman, Unfair Competition

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.

screen-shot-2016-09-09-at-6-52-14-am

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:

View this document on Scribd

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

05 Thursday May 2016

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

≈ Leave a comment

Tags

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

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.

Screen Shot 2016-05-05 at 8.07.12 AM

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.

Screen Shot 2016-05-05 at 7.54.45 AM

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:

View this document on Scribd

 

 

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

04 Monday Jan 2016

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

≈ Leave a comment

Tags

Copyright Infringement, False Designation of Origin, Fraud, Litigation Update, Trademark Infringement, Unfair Competition, Violation of the Permanent Injunction

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:

View this document on Scribd

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

29 Thursday Oct 2015

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

≈ Leave a comment

Tags

Copyright Infringement, False Designation of Origin, John Jelderks

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:

View this document on Scribd

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

05 Tuesday May 2015

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

≈ Leave a comment

Tags

Conversion, Copyright Infringement, False Designation of Origin, Michael H. Simon, Misappropriation of Trade Secrets, Trademark Counterfeiting, Trademark Infringement, Unfair Business Practices, Unfair Competition

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

View this document on Scribd
← Older posts

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...