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Oregon businesses must protect their branding through trademark

You could say the bedrock of every business is its branding – words, jingles, symbols, colors and names to associate with the business. Brands are protected through trademarks that the owners hope will bring instant recognition and association with the business entity.

Business owners work hard sometimes for years to establish their trademarked brands, which can add significant value and can even make or break a business effort. While trademark owners get rights in their trademarks just through use, federal registration with the U.S. Patent and Trademark Office (USPTO) puts the public on notice of the exclusive ownership and gives certain legal privileges to the owner.

Legal counsel for trademark issues

Business owners should develop a relationship with an attorney with knowledge of and experience in intellectual property law. Legal counsel can assist with the development of trademarks likely to hold up in the marketplace, that do not infringe on the trademark rights of others and that appear favorable for federal registration, a complex process that the lawyer can facilitate.

Should a business owner face a charge of trademark infringement or need to protect its marks from infringement by others, an attorney can analyze the situation and provide advice and counsel, including negotiation with the other party and representation in a trademark suit if necessary.

Example of a trademark infringement claim

On Dec. 29, 2020, 7-Eleven, Inc. filed a trademark infringement and counterfeiting lawsuit in the U.S. District Court for the District of Oregon against Sangha Investments LLC and Gurdial Singh Sangha, doing business as Quick E Mart. Most Americans can see an image in their minds of what the iconic 7-Eleven sign and colors look like. In the suit, 7-Eleven alleges that the defendants’ convenience store uses signage so similar that it infringes on 7-Eleven’s trademarks.

(The link is to the lawsuit’s complaint, which contains images of 7-Eleven’s trademarked signs, symbols and color combinations as well as those allegedly infringing at Quick E Mart.)

The plaintiff 7-Eleven says that it has invested millions into promoting its products through its trademarks used in advertising and signage and that this has “developed goodwill, public recognition, and strong rights in its … marks.” It also alleges that its marks are both inherently distinctive, identifying for the public the source of the products associated with the marks, as well as having acquired distinction through use in the marketplace.

The complaint alleges that Quick E Mart’s use of similar symbols and color combinations makes it likely that the public will be confused about the source of the affiliated products or mistaken that they are linked to 7-Eleven and that this confusion is likely to dilute the strength and worth of 7-Eleven’s marks. The plaintiff further alleges that the defendants’ use of the infringing marks is intentional, willful and in bad faith.

7-Eleven accuses the defendant of infringing its federal trademarks, of federal counterfeiting and of infringing and diluting its common law trademarks under Oregon state law, as well as other claims. It asks the court to order Quick E Mart to stop using all infringing marks and to pay damages for 7-Eleven’s losses and to disgorge any profits wrongfully obtained as well as pay legal fees, costs and interest.

It will be interesting to see how this case is resolved. In the meantime, any Oregon business with questions about how to protect its brands should speak with an attorney as soon as possible to begin to establish legal protections.

Attorney George Mead of The Mead Law Firm P.C. in Lake Oswego represents business owners throughout the greater Portland area in trademark and other intellectual property matters.

 

 

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