Tag Archives: Unfair Competition

Actual consumer confusion alleged in lawsuit over WESTCARE trademark

07 Monday May 2018

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

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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:

Unauthorized UtilitySport® Trailers Allegedly Sold in Oregon

13 Wednesday Sep 2017

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

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This lawsuit arises out of the manufacture, importation, offer for sale, sale, and distribution in the United States of unauthorized copies of UtilitySport® trailers by the Defendants.

The Plaintiff is a utility trailer kit manufacturer located in Grants Pass, Oregon. It owns federal trademark registrations for UtilityMate® and UtilitySport®.

In 2011, Plaintiff entered into a contract with the Defendants for the manufacture of trailers. The Defendants are now accused of manufacturing and selling trailers based on Plaintiff’s designs and using Plaintiff’s trademarks without permission and without compensating Plaintiff.

Trailers Intl LLC et al v. STC International (Shanghai) Co. Ltd. et al.

Court Case Number: 3:17-cv-01432-SI
File Date: Monday, September 11, 2017
Plaintiff: Trailers Intl LLC, Vincent L. Webb
Plaintiff Counsel: Stephen J. Joncus of Joncus Law LLC
Defendant: STC International (Shanghai) Co. Ltd., Rockford Commercial Warehouse, Inc., Power Equipment Direct Inc.
Cause: Copyright Infringement, Trademark Infringement, Unfair Competition, Breach of Contract
Court: District of Oregon
Judge: Michael H. Simon

Complaint:

Motion for Preliminary Injunction, Response Filed in Portland Heart Pizza Trademark Lawsuit

12 Tuesday Sep 2017

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

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Portland, Oregon’s Heart coffee roasters has filed a Motion for Preliminary Injunction in its trademark lawsuit against nearby Heart Pizza (read the original Complaint here).

We also now have a Response from Heart Pizza. There’s some good legal reading in the documents (below) but I’ve included a few highlights. I especially like Heart Pizza’s arguments around why keeping its name is in the public interest.

Public, now’s your chance to speak up…is it in your interest that Heart Pizza keep its name or should it pick a new one? Leave a comment below.

Motion for Preliminary Injunction:

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Response to Motion for Preliminary Injunction:

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Stay tuned for the Court’s ruling on the Plaintiff’s Motion for Preliminary Injunction.

Heart, LLC v. Heart Pizza, LLC

Court Case Number: 3:17-cv-01297-YY
File Date: Monday, August 21, 2017
Plaintiff: Heart, LLC
Plaintiff Counsel: Kenneth R. Davis II, Parna A. Mehrbani of LANE POWELL PC
Defendant: Heart Pizza, LLC, Micah Camden
Defendant Counsel: Steven T. Lovett, Nathan C. Brunette, Elliott J. Williams of STOEL RIVES LLP
Cause: Unfair Competition, Oregon Trademark Infringement, Common Law Trademark Infringement, Common Law Unfair Competition
Court: District of Oregon
Judge: Youlee Yim You

Motion for Preliminary Injunction:

Response to Motion for Preliminary Injunction:

Heart coffee v. Heart Pizza…are you confused?

22 Tuesday Aug 2017

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

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This Portland-centric trademark lawsuit has some interesting facts. Normally a consumer might not confuse coffee roasters with pizza makers, but what about when they’re just one block apart?

Apparently the individual Defendant, a well-known Portland restaurateur and owner of Blue Star Donuts, used to be a daily visitor to Plaintiff’s Heart cafe on SW 12th Avenue. In addition to their coffee, he also seemingly liked their name, deciding to start an unrelated pizza shop called Heart Pizza just 0.1 miles away.

The Complaint (below) asserts actual confusion and alleges false representations of permission made by Defendant. Cease-and-desist communications from Plaintiff were unsuccessful, hence this lawsuit.

Stay tuned for updates.

Heart, LLC v. Heart Pizza, LLC et al.

Court Case Number: 3:17-cv-01297-YY
File Date: Monday, August 21, 2017
Plaintiff: Heart, LLC
Plaintiff Counsel: Kenneth R. Davis II, Parna A. Mehrbani of LANE POWELL PC
Defendant: Heart Pizza, LLC, Micah Camden
Cause: Unfair Competition, Oregon Trademark Infringement, Common Law Trademark Infringement, Common Law Unfair Competition
Court: District of Oregon
Judge: Youlee Yim You

Complaint:

Killer Burger sues former owner over stolen hamburgers

08 Tuesday Aug 2017

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

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Just in time for Portland Burger Week, we have a federal lawsuit over stolen burgers. The Plaintiff is Killer Burger, allegedly “the most popular burger restaurant in Portland, Oregon.”

The Defendants are a former owner of Killer Burger, his wife, and their new restaurant in downtown Portland, Rock and Roll Chili Pit.

The Defendants left Killer Burger in 2016 (apparently not on the best of terms) to start their new restaurant and are accused of “using and advertising two burgers which were stolen straight from the Killer Burger menu.”

Killer Burger considers their burger recipes to be confidential information. Defendants also allegedly used the same burger names (EPIC and BLACK MOLLY) on their menu, hence the trademark claim. Note that Defendant, in a social media video, apparently claims to be the original creator of the two burgers at issue and thus fully entitled to sell them at his new restaurant.

If you can’t get out for Burger Week and want to make the infringing burgers at home, here’s what you’ll need:

“The Epic includes pulled pork, bacon and coleslaw. The Black Molly includes a smokey house sauce, grilled onions and house-brined roasted green chilies.”

Yum. Enjoy Burger Week everyone!

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Photo credit: Bob Burchfield

Killer Burger, Inc. v. Rock and Roll Chili Pit, Inc. et al

Court Case Number: 3:17-cv-01219-MO
File Date: Friday, August 4, 2017
Plaintiff: Killer Burger, Inc.
Plaintiff Counsel: Thomas A. Ped, S. Ward Greene of Williams Kastner Greene & Markley
Defendant: Rock and Roll Chili Pit, Inc., Mark McCrary, Robin McCrary
Cause: Unfair Competition, Violation of ORS Chapter 647, Oregon Trademark Infringement, Violation of Common Law rights, Breach of Contract
Court: District of Oregon
Judge: Michael W. Mosman

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:

Yarn company sues to enforce Twisted trademark

27 Monday Jun 2016

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

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The Plaintiff, based in Portland, Oregon, sells knitting, crochet, spinning, and weaving supplies using the trade name Twisted.

In April 2016, the Plaintiff learned that Defendants, a competitor based in Chelan, Washington, had recently changed their name from “Warehouse Woolery” to “Twisted Fine Yarn & Wool”. The Complaint (below) references several actual instances of confusion.

On June 9, 2016, after receiving Plaintiff’s letters, which put Defendants on notice of Plaintiff’s TWISTED marks and claim of infringement, Defendants filed a federal trademark application for TWISTED FINE YARN & WOOL. That action, unsurprisingly, prompted this trademark lawsuit and likely a trademark opposition. Stay tuned for updates.Screen Shot 2016-06-27 at 6.08.23 PM

Twisted LLC v. 3ZS LLC et al

Court Case Number: 3:16-cv-01259-BR
File Date: Friday, June 24, 2016
Plaintiff: Twisted, LLC
Plaintiff Counsel: Parna A. Mehrbani of Lane Powell PC
Defendant: 3ZS, LLC d/b/a Twisted Fine Yarn & Wool, Sandi Sandum
Cause: Federal Trademark Infringement, Unfair Competition, Oregon, State Trademark Infringement, Common Law Trademark Infringement, Common Law Unfair Competition
Court: District of Oregon
Judge: Anna J. Brown

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:

Oregon Trademark Litigation Update – Too Marker Products et al v. Peter Pauper Press

03 Thursday Mar 2016

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

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Plaintiff manufactures and sells high-end markers for illustrators and design professionals. Their “COPIC” line of markers have distinctive squarish bodies and distinctive squarish cap-ends, both protected by U.S. trademark registrations.

This lawsuit arises because the configuration of Defendant’s Studio Series markers is alleged to be confusingly similar to the configuration denoted in the trademark registrations and the configuration of Plaintiffs’ markers.

In 2014, Plaintiff filed a similar lawsuit. That case resulted in a settlement agreement and permanent injunction against the defendant.

Registration

Too Marker Products, Inc. et al v. Peter Pauper Press, Inc.

Court Case Number: 3:16-cv-00387-AC
File Date: Tuesday, March 1, 2016
Plaintiff: Too Marker Products, Inc., Imagination International, Inc.
Plaintiff Counsel: Timothy S. DeJong, Jacob S. Gill of Stoll Stoll Berne Lokting & Shlachter, P.C.
Defendant: Peter Pauper Press, Inc.
Cause: Federal Trademark Infringement, Common Law Trademark Infringement, Unfair Competition
Court: District of Oregon
Judge: John V. Acosta

Complaint: