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Tag Archives: Paul Papak

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

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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:

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Copyright infringement lawsuit filed over orthodontic pamphlets

10 Wednesday May 2017

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

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Copyright Infringement, Paul Papak

For over 27 years, Plaintiff has created orthodontic marketing and patient education materials. Among their creations are two pamphlets titled Orthodontic Brushing and Flossing Procedures and Smiles with Style. Both pamphlets are registered with the U.S. Copyright Office.

The Defendant is accused of making and distributing digital versions of Plaintiff’s pamphlets on websites it created for orthodontists. Cease and desist letters were sent by Plaintiff’s counsel without a reply, hence this lawsuit.

OREC Professional Marketing Systems, Inc. v. Sesame Communications, Inc.

Court Case Number: 3:17-cv-00713-PK
File Date: Monday, May 8, 2017
Plaintiff: OREC Professional Marketing Systems, Inc.
Plaintiff Counsel: Nathan C. Brunette of Stoel Rives LLP
Defendant: Sesame Communications, Inc.
Cause: Copyright Infringement
Court: District of Oregon
Judge: Paul Papak

Complaint:

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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.

Screen Shot 2016-03-21 at 7.33.30 AM

Screen Shot 2016-03-21 at 7.31.29 AM

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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Oregon Litigation Update – adidas America v. Reliable Knitting Works

02 Thursday Jul 2015

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

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Common Law Trademark Infringement and Unfair Competition, Federal Trademark Dilution, Federal Unfair Competition, Litigation Update, Paul Papak, State Trademark Dilution, Trademark Infringement, Unfair and Deceptive Trade Practices

Adidas has filed a trademark complaint against Reliable Knitting Works, a Wisconsin based company doing business as Reliable of Milwaukee. Adidas is alleging that Muk Luks, one of Reliable’s brands, sells a shoe that, Adidas alleges, “bears parallel stripes on the mid-foot portion of the upper in a manner likely to be confused with adidas’s famous Three-Stripe Mark.”

Adidas is asking the Court to: “(a) permanently enjoin Reliable from marketing or selling footwear bearing confusingly similar two-, three-, and four-stripe imitations of the Three-Stripe Mark; (b) award adidas monetary damages and to treble that award; (c) require Reliable to disgorge all profits from sales of the Infringing Footwear; and (d) award adidas punitive damages, attorneys’ fees, and costs.” 

adidas America, Inc. et al v. Reliable Knitting Works, Inc.

Court Case Number: 3:15-cv-01217-PK
File Date: Wednesday, July 1, 2015
Plaintiff: adidas America, Inc., adidas AG
Plaintiff Counsel: Kristina J. Holm and Stephen M. Feldman of Perkins Coie, LLP
Defendant: Reliable Knitting Works, Inc.
Cause: 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: Magistrate Judge Paul Papak

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Oregon Trademark Litigation Update – Control Solutions v. Microdaq.com

02 Saturday May 2015

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

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Civil Action by Private Party, Common Law Trademark Infringement, Federal False Designation of Origin, Injunctive Relief, Intentional Interference with Economic Relations, Interference with Prospective Business Advantage, Misrepresentation, Paul Papak, Remedies for Infringement, Trademark Counterfeiting, Trademark Infringement, Unlawful Trade Practices

Control Solutions is in the business of selling certified, calibrated thermometers and data “loggers,” devices that record temperature readings over time. MicroDAQ.com was allegedly running Google Adwords campaigns, such that an internet user searching on of Control Solutions’ trademarks, trade names and/or product names/numbers would receive as a search result a reference and hyperlink to MicrDAQ’s website and purchasing system instead of Control Solutions’. In March 2015, MicroDAQ.com’s sales & marketing manager replied to a cease and desist letter. In the reply, the manager admitted to running at least two such campaigns and promised to stop the campaigns. Control Solutions claims that the ad campaigns resulted in lost sales as well as lost future revenue since a portion of the company’s revenue is derived from recertifying devices sold to customers.

Control Solutions Inc. v. Microdaq.com Inc. et al

Court Case Number: 3:15-cv-00748-PK
File Date: Friday, May 01, 2015
Plaintiff: Control Solutions Inc.
Plaintiff Counsel: Gano D. Lemoine III of Lemoine Law Firm
Defendant: Microdaq.com Inc., Does 1-10
Cause: Unlawful Business/Trade Practices, Civil Action by Private Party, Trademark Counterfeiting, Remedies for Infringement, Injunctive Relief, Interference with Prospective Business Advantage, Intentional Interference with Economic Relations, Common Law Trademark Infringement, Trademark Infringement, Federal Statutory False Designation of Origin, Misrepresentation in Commercial Advertising or Promotion
Court: District of Oregon
Judge: Magistrate Judge Paul Papak

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Oregon Trademark Litigation Update – adidas America v. Marc Jacobs International

09 Thursday Apr 2015

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

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Common Law Trademark Infringement and Unfair Competition, Federal Trademark Dilution, Federal Trademark Infringement, Federal Unfair Competition, Litigation Update, Paul Papak, State Trademark Dilution, Trademark Infringement, Unfair and Deceptive Trade Practices

Does trademark protection of Adidas’ famous “Three-Stripe Mark” also extend to four stripes? Fashion designer Marc Jacobs is ready to debate that question in Oregon federal court.

Some media coverage of the lawsuit, with images: de zeen, NY Post

Stay tuned for updates.

adidas America Inc. et al v. Marc Jacobs International LLC

Court Case Number: 3:15-cv-00582
File Date: Wednesday, April 08, 2015
Plaintiff: adidas America Inc., adidas AG
Plaintiff Counsel: Stephen M. Feldman, Kristina J. Holm of Perkins Coie LLP
Defendant: Marc Jacobs International LLC
Cause: 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: Magistrate Judge Paul Papak

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Voltage Pictures Files Five More Lawsuits Against Individual Does

10 Monday Nov 2014

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

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BitTorrent, Copyright Infringement, Dennis J. Hubel, Indirect Infringement, John V. Acosta, Litigation Update, Marco A. Hernandez, Paul Papak, State Trademark, Thomas M. Coffin, Voltage Pictures

People of Oregon, stop using BitTorrent to download Dallas Buyers Club!

Voltage Pictures returns with five more BitTorrent lawsuits alleging unauthorized downloading of the film. Each lawsuit is against a single Doe with claims of copyright infringement, indirect infringement and state trademark infringement.

Court Case Number: 3:14-cv-01780
File Date: Saturday, November 08, 2014
Plaintiff: Voltage Pictures LLC, Dallas Buyers Club LLC
Plaintiff Counsel: Carl D. Crowell of Crowell Law
Defendant: Doe
Cause: Copyright Infringement, Indirect Infringement, State Trademark
Court: District of Oregon
Judge: Paul Papak

Court Case Number: 3:14-cv-01781
File Date: Saturday, November 08, 2014
Plaintiff: Voltage Pictures LLC, Dallas Buyers Club LLC
Plaintiff Counsel: Carl D. Crowell of Crowell Law
Defendant: Doe
Cause: Copyright Infringement, Indirect Infringement, State Trademark
Court: District of Oregon
Judge: Dennis J. Hubel

Court Case Number: 3:14-cv-01782
File Date: Saturday, November 08, 2014
Plaintiff: Voltage Pictures LLC, Dallas Buyers Club LLC
Plaintiff Counsel: Carl D. Crowell of Crowell Law
Defendant: Doe
Cause: Copyright Infringement, Indirect Infringement, State Trademark
Court: District of Oregon
Judge: Marco A. Hernandez

Court Case Number: 6:14-cv-01783-TC
File Date: Saturday, November 08, 2014
Plaintiff: Voltage Pictures LLC, Dallas Buyers Club LLC
Plaintiff Counsel: Carl D. Crowell of Crowell Law
Defendant: Doe
Cause: Copyright Infringement, Indirect Infringement, State Trademark
Court: District of Oregon
Judge: John V. Acosta

Court Case Number: 6:14-cv-01784-TC
File Date: Saturday, November 08, 2014
Plaintiff: Voltage Pictures LLC, Dallas Buyers Club LLC
Plaintiff Counsel: Carl D. Crowell of Crowell Law
Defendant: Doe
Cause: Copyright Infringement, Indirect Infringement, State Trademark
Court: District of Oregon
Judge: John V. Acosta

Representative Complaint:

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

10 Tuesday Jun 2014

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

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Breach of Contract, Common Law Unfair Competition, False Advertising, False Designation of Origin, Litigation Update, Paul Papak, Trademark Infringement

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

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Oregon Trademark Litigation Update – iovation v. IOvations

29 Thursday May 2014

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

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Common Law Trademark Infringement, False Designation of Origin, Federal Trademark Infringement, Litigation Update, Paul Papak, Unfair Competition

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

View this document on Scribd

 

Oregon Copyright Litigation Update – Pendleton Woolen Mills v. Kraff’s Men’s Wear Co.

17 Thursday Apr 2014

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

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Breach of Contract, Common Law Trademark Infringement, Common Law Unfair Competition, Copyright Infringement, Federal Trademark Infringement, Federal Unfair Competition, Intentional Interference with Economic Relations, Litigation Update, Paul Papak

Plaintiff is a Portland, Oregon-based designer/manufacturer/retailer of high quality wool fabrics and apparel, and is known for its unique proprietary fabric and blanket designs. Plaintiff regularly enters into sales contracts with wholesale customers, who must agree that “The Purchaser will not sell the goods or any part thereof, to another dealer or to any other reseller, and will not sell the goods through the Internet without the written consent of [Plaintiff].” The 20 John Doe defendants are wholesale customers that have signed the sales contract. None were authorized to sell to Defendant Kraff’s, the primary target of the lawsuit.

Defendant Website ScreenshotDefendant Kraff’s is a retailer operating a clothing store that markets and sells apparel, blankets, and related products in Toppenish, Washington. From approximately 1941 until 2006, Kraff’s was a wholesale customer of Plaintiff. Kraff’s has allegedly continued to purchase product from a Doe defendant after termination of their sales contract with Plaintiff, thus making them an unauthorized reseller of Plaintiff’s goods. Plaintiff brings this lawsuit with numerous copyright claims based on their distinctive designs and trademark claims based on the unauthorized use of their company name.

Stay tuned for updates.

Pendleton Woolen Mills Inc. v. Kraff’s Men’s Wear Co. Inc. et al

Court Case Number: 3:14-cv-00628-PK
File Date: Wednesday, April 16, 2014
Plaintiff: Pendleton Woolen Mills Inc.
Plaintiff Counsel: Parna A. Mehrbani, Vicki L. Smith of Lane Powell PC
Defendant: Kraff’s Men’s Wear Co. Inc., Daniel P. Johnson, John Doe Companies 1-20
Cause: Copyright Infringement, Federal Trademark Infringement, Federal Unfair Competition, Common Law Trademark Infringement, Common Law Unfair Competition, Intentional Interference with Economic Relations, Breach of Contract
Court: District of Oregon
Judge: Magistrate Judge Paul Papak

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