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Tag Archives: State Trademark Dilution

Actual consumer confusion alleged in lawsuit over WESTCARE trademark

07 Monday May 2018

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

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Tags

Common Law Trademark Infringement, Common Law Unfair Competition, Michael J. McShane, State Trademark Dilution, Unfair Competition

The plaintiff in this lawsuit, Westcare, is a Salem, Oregon-based provider of management services to long-term care facilities. Plaintiff claims to have used their “Westcare” mark since 1987. Plaintiff obtained a federal trademark registration in October 2017.

The defendant, Westcare Foundation, is a Nevada non-profit corporation that operates long-term and short-term care facilities, including a veterans’ facility in Salem, Oregon.

The defendant allegedly first began operating in Oregon in June 2012. Plaintiff became aware of the defendant’s Oregon facility in June 2016, and asserts numerous instances of actual consumer confusion.

Plaintiff sent a series of letters requesting that defendant adopt a DBA, with no success, hence this lawsuit. Stay tuned for updates.

Westcare Management, Inc. v. Westcare Foundation, Inc.

Court Case Number: 6:18-cv-00764-MC
File Date: Thursday, May 3, 2018
Plaintiff: Westcare Management, Inc.
Plaintiff Counsel: Randall P. Sutton of Saalfeld Griggs PC
Defendant: Westcare Foundation, Inc.
Causes: Unfair Competition, State Trademark Dilution, Common Law Trademark Infringement, Common Law Unfair Competition
Court: District of Oregon
Judge: Michael J. McShane

Complaint:

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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

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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

adidas sues Puma over “Three-Stripe” Trademark

21 Tuesday Feb 2017

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

≈ 1 Comment

Tags

Adidas, Common Law Trademark Infringement and Unfair Competition, Federal Trademark Dilution, Federal Trademark Infringement, Federal Unfair Competition, Injury to Business Reputation, State Trademark Dilution, Unfair and Deceptive Trade Practices

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.

screen-shot-2017-02-21-at-9-24-00-am

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

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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

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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

 

Simple Finance files trademark lawsuit against Simple RTO, alleges website mimicry

10 Tuesday May 2016

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

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Anna J. Brown, Common Law Trademark Infringement, Common Law Unfair Competition, Federal Trademark Infringement, Federal Unfair Competition, Litigation Update, State Trademark Dilution

This trademark dispute involves the trademarks SIMPLE and SIMPLE FINANCE in connection with financial services.

In addition to using confusingly similar trademarks, the Defendant is also accused of mimicking the design of Plaintiff’s website.

Screen Shot 2016-05-10 at 6.38.44 AM

Simple Finance Technology Corp. v. Simple RTO, LLC

Court Case Number: 3:16-cv-00801-BR
File Date: Monday, May 9, 2016
Plaintiff: Simple Finance Technology Corp.
Plaintiff Counsel: Kristina J. Holm, William C. Rava of Perkins Coie LLP
Defendant: Simple RTO, LLC d/b/a Simple Finance
Cause: Federal Trademark Infringement, Federal Unfair Competition, Common Law Trademark Infringement, Common Law Unfair Competition, State Dilution
Court: District of Oregon
Judge: Anna J. Brown

Complaint:

View this document on Scribd

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

21 Thursday Apr 2016

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

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Common Law Trademark Infringement, Common Law Unfair Competition, Federal Trademark Dilution, Federal Trademark Infringement, Marco A. Hernandez, Passing Off, State Trademark Dilution, Unfair Competition, Unlawful Trade Practices

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”

IMG_8773.jpg

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.
Screen Shot 2016-04-21 at 7.50.35 AM

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:

View this document on Scribd

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

08 Tuesday Mar 2016

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

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Tags

Adidas, Common Law Trademark Infringement, Common Law Unfair Competition, Federal Trademark Dilution, Federal Trademark Infringement, Federal Unfair Competition, Litigation Update, Marco A. Hernandez, State Trademark Dilution, State Unfair and Deceptive Trade Practices

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

Screen Shot 2016-03-08 at 10.37.29 AM

 

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:

View this document on Scribd

Oregon Trademark Litigation Update – adidas America v. TRB Acquisitions

12 Thursday Nov 2015

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

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Tags

Adidas, Common Law Trademark Infringement, Common Law Unfair Competition, Federal Trademark Dilution, Federal Trademark Infringement, Federal Unfair Competition, Injury to Business Reputation, Litigation Update, Michael H. Simon, State Trademark Dilution, Unfair and Deceptive Trade Practices

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.

Screen Shot 2015-11-12 at 8.21.22 AM

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:

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

24 Thursday Sep 2015

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

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Tags

Common Law Trademark Infringement, Common Law Trademark Infringement and Unfair Competition, Common Law Unfair Competition, Federal Trademark Dilution, Federal Trademark Infringement, Federal Unfair Competition, John Jelderks, State Trademark Dilution, Trade Dress Infringement, Trademark Infringement, Unfair and Deceptive Trade Practices, Unfair Competition, Unfair Trade Practices

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:

View this document on Scribd

1995 Agreement:

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Oregon Trademark Litigation Update – adidas America v. Forever 21

18 Tuesday Aug 2015

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

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Common Law Trademark Infringement, Common Law Trademark Infringement and Unfair Competition, Common Law Unfair Competition, Federal Trademark Dilution, Federal Trademark Infringement, Federal Unfair Competition, Michael H. Simon, State Trademark Dilution, Trademark Counterfeiting, Trademark Infringement, Unfair and Deceptive Trade Practices, Unfair Competition, Unfair Trade Practices

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

View this document on Scribd
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