1 – OPINION AND ORDER 

IN THE UNITED STATES DISTRICT COURT 

FOR THE DISTRICT OF OREGON 

PORTLAND DIVISION 

ROBERT M. LYDEN, 

No. 3:14-cv-01586-MO

Plaintiff,

OPINION AND ORDER

v. 

adidas AMERICA, INC., a Delaware 

corporation, adidas AG, a German entity, 

adidas INTERNATIONAL MARKETING 

B.V., a Dutch entity, THE FINISH LINE 

INC., an Indiana corporation, FOOT LOCKER, 

INC., a New York corporation, and DICK’S 

SPORTING GOODS, INC., a Delaware 

corporation,

Defendants. 

MOSMAN, J., 

On October 10, 2014, Plaintiff Robert Lyden filed a complaint alleging Defendants had 

violated his intellectual property rights relating to his Springshoe design. Claims 1-6 are based 

on trademark rights Mr. Lyden claims to own. Claims 7-9 are based on patent rights Mr. Lyden 

claims to own. 

On December 22, 2014, Defendants filed a Motion to Dismiss Claims 1-6 [24]. 

Defendants argue Mr. Lyden has failed to properly plead he ever owned the trademark rights he 

now claims. In the alternative, Defendants argue Mr. Lyden has since abandoned any trademark 

rights he might have held in the past. Finally, to the extent Mr. Lyden still owns any valid 

trademark rights, Defendants argue Mr. Lyden’s Claims 5-6 for dilution fail because he cannot 

meet the “fame” requirement of the federal Trademark Dilution Revision Act. In addition to 

Case 3:14-cv-01586-MO Document 61 Filed 02/10/15 Page 1 of 9
2 – OPINION AND ORDER 

these arguments for dismissal, Defendants have asked for a stay of any deadline to respond to 

Claims 7-9 until the resolution of this motion. 

LEGAL STANDARD 

A well-pleaded complaint requires only “a short and plain statement of the claim showing 

that the pleader is entitled to relief.” Fed. R. Civ. P. 8(a)(2). A federal claimant is not required to 

detail all factual allegations; however, the complaint must provide “more than labels and 

conclusions, and a formulaic recitation of the elements of a cause of action will not do.” Bell Atl. 

Corp. v. Twombly, 550 U.S. 544, 555 (2007) (citations omitted). “Factual allegations must be 

enough to raise a right to relief above the speculative level.” Id. While the court must assume 

that all facts alleged in a complaint are true and view them in a light most favorable to the 

nonmoving party, it need not accept as true any legal conclusion set forth in the complaint. 

Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). “[F]or a complaint to survive a motion to dismiss, 

the non-conclusory ‘factual content,’ and reasonable inferences from that content, must be 

plausibly suggestive of a claim entitling the plaintiff to relief.” Moss v. US. Secret Serv., 572 

F.3d 962, 969 (9th Cir. 2009) (quoting Iqbal, 129 S. Ct. at 1949). 

These standards are tempered somewhat when the plaintiff is proceeding pro se. “A 

document filed pro se is ‘to be liberally construed,’ . . . and ‘a pro se complaint, however 

inartfully pleaded, must be held to less stringent standards than formal pleadings drafted by 

lawyers.’” Erickson v. Pardus, 551 U.S. 89, 94 (2007) (quoting Estelle v. Gamble, 429 U.S. 97, 

106 (1976)); see Hebbe v. Pliler, 627 F.3d 338, 342 (9th Cir. 2010) (noting the Iqbal and 

Twombly pleading standards “did not alter courts’ treatment of pro se filings”; joining “the five 

other circuits that have determined that pro se complaints should continue to be liberally 

construed after Iqbal”). 

Case 3:14-cv-01586-MO Document 61 Filed 02/10/15 Page 2 of 9
3 – OPINION AND ORDER 

“[A] fundamental principle of trademark law [is]: Registration does not create a mark or 

confer ownership; only use in the marketplace can establish a mark.” Miller v. Glenn Miller 

Prods., Inc., 454 F.3d 975, 979 (9th Cir. 2006). In addition, unlike registration on the Principal 

Register, registration on the Supplemental Register does not constitute prima facie evidence of 

the validity of a trademark. See 15 U.S.C. §§1057(b), 1094, 1115. 

To establish protectable rights in a trademark, the plaintiff must prove continuous “use in 

commerce.” The Lanham Act defines “use in commerce” as “the bona fide use of a mark in the 

ordinary course of trade, and not made merely to reserve the right in a mark.” 15 U.S.C. § 1127. 

A mark is considered to be used in commerce when the good to which it is affixed is sold or 

transported in interstate commerce. Id. “A mark ‘is not meritorious of trademark protection until 

it is used in public in a manner that creates an association among consumers between the mark 

and the mark’s owner.’” Matrix Motor Co., Inc. v. Toyota Motor Sales, U.S.A., Inc., 120 Fed. 

Appx. 30, 31 (9th Cir. 2005) (quoting Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 

F.3d 1036, 1051 (9th Cir. 1999). In other words, “[o]ne . . . may not ‘own’ a trademark unless 

one uses the mark as a designation of origin on or in connection with goods or services made or 

furnished by or under one’s control.” Aini v. Sun Taiyang Co ., Ltd., 964 F. Supp. 762, 773 

(S.D.N.Y. 1997). 

RELEVANT FACTS 

Mr. Lyden owns Registration Nos. 3,629,011 and 3,633,365 on the Supplemental 

Register of the U.S. Patent and Trademark Office (“USPTO”). Supplemental Registration No. 

3,629,011 states that “[t]he mark consists of a heel counter and spring element in the rearfoot 

area of footwear.” Pl.’s Compl. [1-1] at 36. Supplemental Registration No. 3,633,365 states that 

“[t]he mark consists of a spring element in the rearfoot area of footwear.” Id. at 40. Mr. Lyden 

submitted the following drawings in support of his applications to obtain these registrations: 

Case 3:14-cv-01586-MO Document 61 Filed 02/10/15 Page 3 of 9
4 – OPINION AND ORDER 

Id. at 35, 38. Mr. Lyden refers to these registrations collectively as the “Springshoe Marks.” 

Although Mr. Lyden has never tried to sell his Springshoe to the general public, Mr. Lyden 

claims that he has offered to license or sell his footwear patents and Springshoe Marks to 

existing companies in the footwear industry many times over the past decade. Pl.’s Compl. [1] at 

23, 27. Mr. Lyden claims to have had fairly in-depth negotiations with Fila, Inc. in 2001 and 

DashAmerica, Inc. in 2007 regarding licensing deals to market and sell the Springshoe design. 

Pl.’s Response [26] at 8–9. Each of those deals, however, ultimately fell apart. Id. Mr. Lyden 

also claims to have entered into an Intellectual Property and Prototype Agreement with Nike, 

Inc. in 2002 in which Nike paid Mr. Lyden and his partners $300,000 in return for about a dozen 

Springshoe prototypes that Nike would never have to return. Id. Mr. Lyden also claims to have 

attempted to sell his Springshoe intellectual property to adidas and other companies in the 

footwear industry in 2014. Pl.’s Compl. [1] at 27. Mr. Lyden believes that as a result of these 

efforts to license or sell the Springshoe Marks, he “has built up and now owns valuable goodwill 

that is symbolized by the mark” and that “members of the footwear industry and the public have 

come to associate the Springshoe Marks with [him].” Pl.’s Compl. at 28.

ANALYSIS 

I. Validity of Mr. Lyden’s Trademark Rights 

Defendants’ Motion to Dismiss Claims 1-6 should be granted, but Mr. Lyden will be 

given leave to amend his complaint. Although Mr. Lyden’s briefing in opposition of this motion 

Case 3:14-cv-01586-MO Document 61 Filed 02/10/15 Page 4 of 9
5 – OPINION AND ORDER 

states facts sufficient to meet the pleading standards of FRCP 8, those facts are not contained in 

his complaint. Therefore, Mr. Lyden has failed to plead the necessary facts to establish that he 

had any valid trademark rights over the Springshoe Marks. 

As the statutory text makes clear, Mr. Lyden’s supplemental registrations do not 

constitute prima facie evidence of trademark validity. See 15 U.S.C. §§1057(b), 1094, 1115. In 

order to establish any rights in the Springshoe Marks, Mr. Lyden must be able to plead that he 

used the marks as a trademark in commerce. See Miller, 454 F.3d at 979. 

The Lanham Act defines a trademark as “any word, name, symbol, or device, or any 

combination thereof [used by a person] . . . to identify and distinguish his or her goods, including 

a unique product, from those manufactured or sold by others and to indicate the source of the 

goods, even if that source is unknown.” 15 U.S.C. § 1127. The key characteristic being that the 

mark is used as a “designation of origin.” Aini, 964 F. Supp. at 773. If anything, Mr. Lyden’s 

Springshoe Mark is unique. I believe that Mr. Lyden’s Springshoe Marks did serve “to identify 

and distinguish his . . . goods . . . from those manufactured or sold by others and to indicate the 

source of the goods,” even though a member of the general public, or even a company in the 

footwear industry, may not have been able to identify Mr. Lyden as the source of the good. 15 

U.S.C. § 1127. 

However, it is not enough for a mark to be unique or to designate origin; the mark must 

also be used in commerce. The Lanham Act defines “use in commerce” as “the bona fide use of 

a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.” Id. 

Mr. Lyden’s briefing contains several examples that plausibly satisfy this requirement. Although 

never finalized, Mr. Lyden’s negotiated deals with Fila, Inc. and DashAmerica, Inc. plausibly 

satisfy the use in commerce requirement. See Dept. of Parks and Rec. for State of Cal. v. Bazaar 

Del Mundo Inc., 448 F.3d 1118, 1126 (9th Cir. 2006) (“[A]dvertising combined with other nonCase 3:14-cv-01586-MO Document 61 Filed 02/10/15 Page 5 of 9
6 – OPINION AND ORDER 

sales activity, under our ‘totality of the circumstances test,’ . . . can constitute prior use in 

commerce.”); New West Corp. v. NYM Co. of Cal., Inc., 595 F.2d 1194, 1200 (9th Cir. 1979) 

(“Actual sale is not necessary.”) (internal citations omitted); New England Duplicating Co. v. 

Mendes, 190 F.2d 415, 418 (1st Cir. 1951) (“It seems to us that although evidence of sales is 

highly persuasive, the question of use adequate to establish appropriation remains one to be 

decided on the facts of each case, and that evidence showing, first, adoption, and, second, use in 

a way sufficiently public to identify or distinguish the marked goods in an appropriate segment 

of the public mind as those of the adopter of the mark, is competent to establish ownership, even 

without evidence of actual sales.”). In addition, Mr. Lyden’s 2002 Intellectual Property and 

Prototype Agreement with Nike, Inc. looks a lot like a sale of goods bearing the mark, and 

therefore may also plausibly satisfy the use in commerce requirement. Defendants make much of 

the fact that Mr. Lyden has never marketed or offered for sale his Springshoe design to the 

general public. It is not at all clear that this is required to establish rights in the mark. Many cases 

hold that the mark only needs to be used in an appropriate segment of the public. See, e.g., Airs 

Aromatics, LLC v. Opinion Victoria’s Secret Stores Brand Management, Inc., 744 F.3d 595, 599 

(9th Cir. 2014) (“[R]equiring usage as ‘to identify or distinguish the marked goods in an 

appropriate segment of the public mind . . .’”) (quoting Brookfield Commc’ns, Inc. v. West Coast 

Entm’t Corp., 174 F.3d 1036, 1052 (9th Cir. 1999)). It is plausible to assert that the relevant 

segment of the public here is the footwear industry. At this stage of the litigation, I think that it 

would be inappropriate to dismiss these claims on the grounds that the use of the mark was not 

sufficiently public. The problem, however, is that none of these facts are contained in the 

complaint. In order to plausibly state a claim upon which relief can be granted, Mr. Lyden needs 

to add these facts to his complaint. 

Case 3:14-cv-01586-MO Document 61 Filed 02/10/15 Page 6 of 9
7 – OPINION AND ORDER 

Defendants also argue that even if Mr. Lyden at one point established rights in the 

Springshoe Marks, he abandoned those rights in 2010. The Lanham Act section on abandonment 

states, “A mark shall be deemed to be ‘abandoned’ if . . . its use has been discontinued with 

intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse 

for 3 consecutive years shall be prima facie evidence of abandonment.” 15 U.S.C. § 1127. 

Defendants argue the last time Mr. Lyden used the Springshoe Marks was in a 2010 business 

plan that was never sent to anyone, and therefore there is prima facie evidence that Mr. Lyden 

abandoned his rights to the Springshoe Marks in 2010. In his complaint, however, Mr. Lyden 

states that he has used the marks in offers to license or sell the Springshoe Marks numerous 

times over the last decade, including in 2014. Pl.’s Compl. [1] at 27. If this is true, Mr. Lyden 

would lack the requisite intent for abandonment, and the prima facie case of abandonment would 

not be established because there has never been a three year period of nonuse. The problem, 

however, is that the complaint contains no facts to support the assertion that the mark has been 

used since 2010. In order to state trademark claims upon which relief can be granted, Mr. 

Lyden’s amended complaint must include facts that establish use of the marks between 2010 and 

the present, such that his rights in the marks were never abandoned. 

For the foregoing reasons, Mr. Lyden’s Claims 1-6 should be dismissed. Mr. Lyden, 

however, will be given an opportunity to amend his complaint. If Mr. Lyden adds the factual 

content described above to his complaint, he will have stated trademark claims that comply with 

the pleading standards of FRCP 8.

II. Trademark Dilution Claims

Defendants also argue that even if Mr. Lyden has established protectable rights in the

Springshoe Marks, claims 5-6 for trademark dilution fail because Mr. Lyden has failed to plead 

sufficient facts to satisfy the fame element of those claims. “[A] mark is famous if it is widely 

Case 3:14-cv-01586-MO Document 61 Filed 02/10/15 Page 7 of 9
8 – OPINION AND ORDER 

recognized by the general consuming public of the United States as a designation of source of the 

goods of service of the mark’s owner.” 15 U.S.C. § 1125(c)(2)(A). In assessing whether a mark 

is famous, the federal Trademark Dilution Revision Act (“TDRA”) outlines several factors for 

assessing fame: “(i) the duration, extent, and geographic reach of advertising and publicity of the 

mark . . .; (ii) The amount, volume, and geographic extent of sales of goods or services offered 

under the mark; (iii) The extent of actual recognition of the mark; [and] (iv) Whether the mark 

was registered . . . on the principal register.” Id. Courts trying to determine whether or not a mark 

is famous have held that “[t]his is a rigorous standard, as it extends protection only to highly 

distinctive marks that are well-known throughout the country.” Green v. Fornario, 486 F.3d 100, 

105 (3d Cir. 2007); see also Bd. Of Regents, Univ. of Texas v. KST Elec., Ltd., 550 F. Supp. 2d 

657, 674 (W.D. Tex. 2008) (Fame is “reserved for a select class of marks—those marks with 

such powerful consumer associations that even non-competing uses can impinge on their 

value.”) 

Mr. Lyden’s response and sur-reply fail to raise any valid counter arguments to 

Defendants’ arguments. Mr. Lyden spends most of his time arguing that the fame standard is 

unfair or anti-competitive. Whether or not that is true is not a matter this court can decide. 

Mr. Lyden has failed to make any valid arguments that his Springshoe Marks are widely 

recognized by the general consuming public. All attempts to use his marks in commerce have 

been to the niche market of companies in the footwear industry—not the general consuming 

public. Because Mr. Lyden has failed to raise any valid counter arguments to dismissal, I find 

that any attempt to amend his complaint regarding these claims would be futile, and therefore I 

dismiss Claims 5 and 6 with prejudice. 

Case 3:14-cv-01586-MO Document 61 Filed 02/10/15 Page 8 of 9
9 – OPINION AND ORDER 

III. Stay of Deadline to Answer Claims 7-9

I agree with the legal precedent cited by Defendants, and therefore find it appropriate to

grant Defendants an extension of time to answer the unchallenged claims in Mr. Lyden’s 

complaint. See, e.g., Talbot v. Sentinel Ins. Co., No. 2:11-CV-01766-KJD-CWH, 2012 WL 

1068763, at *4 (D. Nev. Mar. 29, 2012) (collecting cases); Pestube Sys., Inc. v. HomeTeam Pest 

Def., LLC, No. CIV-05-2832-PHX MHM, 2006 WL 1441014, at *7 (D. Ariz. May 24, 2006); 

Batdorf v. Trans Union, No. C 00-0501 CRB, 2000 WL 635455, at *5 (N.D. Cal. May 8, 2000). 

Defendants are ordered to file their answer to Claims 7-9 when they respond to Mr. Lyden’s 

amended complaint. 

CONCLUSION 

For the foregoing reasons, Defendants Motion to Dismiss [24] is GRANTED. 

Mr. Lyden’s Claims 1-4 are DISMISSED without prejudice. Mr. Lyden has failed to plead 

sufficient facts to establish the trademark rights he now claims. Mr. Lyden has fourteen days 

from the entry of this Opinion and Order to file an amended complaint. Mr. Lyden’s Claims 5-6 

are DISMISSED with prejudice because I have determined that any attempt to amend those 

claims will be futile. 

Defendants’ request for a stay in answering Claims 7-9 is GRANTED. Defendants will 

file an answer to Claims 7-9 when they respond to Mr. Lyden’s amended complaint. 

IT IS SO ORDERED. 

DATED this day of February, 2015. 

___ 

MICHAEL W. MOSMAN

United States District Judge 

10th

/s/Michael W. Mosman

Case 3:14-cv-01586-MO Document 61 Filed 02/10/15 Page 9 of 9