Tag Archives: Federal Trademark Dilution

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

27 Wednesday Jun 2018

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

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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:

 

Trademark lawsuit erupts over use of SUNWORKS with solar energy

13 Tuesday Jun 2017

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

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Plaintiff, a California corporation, has used the registered SUNWORKS trademark since 2010 in connection with installation, maintenance and repair of solar energy systems.

Defendant has operated a solar energy equipment supplier called “Sunworks” in Jackson County, Oregon since 2011.

Plaintiff alleges instances of actual confusion and that Defendant’s operations in Jackson County are an impediment to Plaintiff’s “long standing plan for market expansion.” Defendant has refused to discontinue use of its trademark.

Stay tuned for updates.

Sunworks United, Inc. v. Kirkland

Court Case Number: 1:17-cv-00896-AA
File Date: Wednesday, June 7, 2017
Plaintiff: Sunworks United, Inc.
Plaintiff Counsel: Richard Billin
Defendant: C.J.Kirkland d/b/a Sunworks
Cause: Trademark Infringement, Dilution
Court: District of Oregon
Judge: Ann L. Aiken

Complaint:

adidas sues Puma over “Three-Stripe” Trademark

21 Tuesday Feb 2017

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

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The adidas “Three-Stripe” crusade rolls on, this time targeting Puma’s new four-striped soccer cleat.

Interestingly, unlike the other soccer cleats on the Puma website, this one doesn’t bear Puma’s classic formstrip logo.

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Click the Adidas tag on this post for other “Three-Stripe” litigation.

adidas America Inc. et al v. Puma North America, Inc.

Court Case Number: 3:15-cv-00582
File Date: Wednesday, April 08, 2015
Plaintiff: adidas America Inc., adidas AG, adidas International Marketing B.V.
Plaintiff Counsel: Stephen M. Feldman of Perkins Coie LLP, R.Charles Henn Jr. and Jennifer Fairbairn Deal of Kilpatrick Townsend & Stockton LLP
Defendant: Puma North America, Inc.
Cause: Federal Trademark Infringement, Federal Unfair Competition, Federal Trademark Dilution, Unfair and Deceptive Trade Practices, Common Law Trademark Infringement and Unfair Competition, State Trademark Dilution, Injury to Business Reputation
Court: District of Oregon
Judge: TBD

adidas sues Ecco over “Three-Stripe” Trademark

25 Monday Apr 2016

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

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The adidas “Three-Stripe” crusade continues, this time against Ecco Shoes.

Screen Shot 2016-04-25 at 7.48.57 AMClick the Adidas tag on this post for other “Three-Stripe” litigation.

adidas America, Inc. et al v. ECCO USA, Inc. et al

Court Case Number: 3:2016-cv-00684
File Date: Wednesday, April 20, 2016
Plaintiff: adidas America, Inc., adidas AG
Plaintiff Counsel: Daniel P. Larsen of Ater Wynne LLP
Defendant: Ecco USA, Inc., Ecco SKO A/S
Cause: Federal Trademark Infringement, Federal Unfair Competition, Federal Trademark Dilution, Unfair and Deceptive Trade Practices, Common Law Trademark Infringement, Common Law Unfair Competition, Breach of Contract
Court: District of Oregon
Judge: Michael H. Simon

Complaint:

Stash Tea Company vs. Stash Cannabis Company…are you confused?

21 Thursday Apr 2016

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

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The Plaintiff, Stash Tea Company, has been in the business of merchandising, supplying and selling high quality tea and tea related products since the early 1970s. They are headquartered in Tigard, Oregon, with a Tea Bar in North Portland. Plaintiff owns several trademark registration for STASH, including the following:

U.S. Reg. No. 4,868,446 for STASH covering “On-line wholesale and retail store services featuring dried plants and tea; Wholesale and retail store services featuring dried plants and tea”

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Defendant, Stash Cannabis Company, is a marijuana dispensary in Beaverton, Oregon (for those not from Portland, Beaverton and Tigard are really close.) They opened in September 2015.
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Plaintiff has alleged no instances of actual confusion in the Complaint (below) but apparently doesn’t like another STASH nearby.

Does Plaintiff’s trademark registration for “dried plants” extend to marijuana flowers? Keep in mind Plaintiff has never sold marijuana flowers, dry or otherwise. The very broad and somewhat vague “dried plants” description was not challenged by a USPTO Examining Attorney but could leave the relatively new registration open to reexamination or cancellation.

Stay tuned for updates.

Universal Tea Company, Inc., dba Stash Tea Company v. Stash Cannabis Company, LLC et al

Court Case Number: 3:16-cv-00685
File Date: Wednesday, April 20, 2016
Plaintiff: Universal Tea Company, Inc. d/b/a Stash Tea Company
Plaintiff Counsel: Susan D. Pitchford, Amelia S. Forsberg of Chernoff Vilhauer LLP
Defendant: Stash Cannabis Company, LLC, Chris Matthews
Cause: Federal Trademark Infringement, Unfair Competition, Passing Off, Federal Trademark Dilution, State Trademark Dilution, Common Law Trademark Infringement, Common Law Unfair Competition, Unlawful Trade Practices
Judge: Marco A. Hernandez

Complaint:

adidas “Three-Stripe” Trademark enforced against Four-Stripe Footwear

08 Tuesday Mar 2016

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

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The adidas “Three-Stripe” crusade continues, this time against four stripes…

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Click the Adidas tag on this post for other “Three-Stripe” litigation.

adidas America, Inc. et al v. Athletic Propulsion Labs, LLC

Court Case Number: 3:16-cv-00415-HZ
File Date: Monday, March 7, 2016
Plaintiff: adidas America, Inc., adidas AG
Plaintiff Counsel: Stephen M. Feldman of Perkins Coie LLP
Defendant: Athletic Propulsion Labs
Cause: Federal Trademark Infringement, Federal Unfair Competition, State Unfair and Deceptive Trade Practices, Common Law Trademark Infringement, Common Law Unfair Competition, Federal Trademark Dilution, State Trademark Dilution
Court: District of Oregon
Judge: Marco A. Hernandez

Complaint:

Oregon Trademark Litigation Update – adidas America v. TRB Acquisitions

12 Thursday Nov 2015

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

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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.

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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:

Oregon Trademark Litigation Update – adidas America v. Cougar Sport

07 Wednesday Oct 2015

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

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adidas is back with more “Three-Stripe” litigation, this time against Cougar Sport, a New York-based clothing company selling apparel with four stripes (2 light, 2 dark). adidas has a history of attempting to expand its “Three-Stripe” trademark rights beyond, well, just three stripes. Three can also mean 2 stripes and, if adidas has its way here, 4 stripes.

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The Three-Stripe mark is so famous and distinctive, as adidas frequently reminds us in its Complaint, there must certainly be an argument made that consumers would immediately recognize that 2 and 4-stripe apparel are obviously NOT adidas products.

Earlier this year, fashion designer Marc Jacobs was set to test adidas’ rights to “four stripes,” but adidas voluntarily dismissed the lawsuit shortly after filing the Complaint. Perhaps Cougar Sport should hire Marc Jacobs’ attorneys…

adidas America Inc. et al v. Cougar Sport Inc.

Court Case Number: 3:15-cv-01856-SI
File Date: Wednesday, September 30, 2015
Plaintiff: adidas America Inc., adidas AG
Plaintiff Counsel: Stephen M. Feldman of Perkins Coie LLP
Defendant: Cougar Sport Inc.
Cause: Federal Trademark Infringement, Federal Unfair Competition, Unfair and Deceptive Trade Practices, Common Law Trademark Infringement and Unfair Competition, Federal Trademark Dilution
Court: District of Oregon
Judge: Judge Michael H. Simon

Complaint: 

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

24 Thursday Sep 2015

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

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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:

1995 Agreement:

Oregon Trademark Litigation Update – adidas America v. Forever 21

18 Tuesday Aug 2015

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

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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