Judge I. Leo Glasser
Oregon's Jell-E-Bath Inc. sells home spa products under the JELLYBATH trademark, registered with the U.S. Patent and Trademark Office (USPTO) in 2004. Gelicity UK Ltd. sells bath products under the trademark GELLI BAFF, registered with the United Kingdom Intellectual Property Office in 2006. In Gelicity's action for a declaratory judgment of trademark non-infringement Jell-E-Bath counterclaimed that GELLI BAFF was confusingly similar to JELLYBATH, so that Gelicity harmed Jell-E-Bath's reputation and goodwill. The court granted Gelicity judgment on the pleadings. Jell-E-Bath insufficiently alleged the GELLI BAFF mark's use in commerce. Gelicity's amended USPTO filing removed its prior representation that it used the GELLI BAFF mark in commerce since 2007. Because the USPTO did not adopt Gelicity's prior position, the Gelicity defendants were not estopped from denying the GELLI BAFF mark's use in commerce. Nor did the Jell-E-Bath parties show that the Lanham Act should apply extraterritorially. Finding Oregon law governed Jell-E-Bath's claims for common law trademark infringement, district court dismissed those claims given Jell-E-Bath's failure to show Gelicity used the allegedly infringing mark in commerce within the United States.
