North Pole City in OKC Sues Hallmark Is there a likelihood of confusion between a trademark or tradename indicating a real place with a mark indicating a fictional location? On September 9, 2013, the owners of the North Pole City store in Oklahoma City, Oklahoma (Plaintiff) filed a lawsuit against Hallmark for infringement of their state registered trademark, “North Pole City.” Those familiar with Oklahoma City know the location of the store, which is south of I-40 on I-44. Hallmark, with headquarters just up the road in Wichita, Kansas, have filed for a federal trademark for a line of products that they intend to market under the “North Pole City” name. Plaintiff registered its trademark “North Pole City” in Oklahoma in 1997. Hallmark has since sought to register “North Pole City” as a federal trademark and intends to promote North Pole City as a fictional city. Hallmark plans for the promotion to take place for the 2014 holiday season. Plaintiff asserts that there has been or will be confusion as to the source of products that Hallmark markets under the name “North Pole City,” i.e. there is a likelihood of confusion. This strikes right at the heart of what trademark law is intended to prevent. Plaintiff alleges, inter alia, Hallmark is engaging in unfair competition, and Hallmark intends, by infringing actions, to harm the local Oklahoma City store’s business. Hallmark’s answer to the complaint is due next week. They will likely go straight to the heart of the matter and assert there is no likelihood of confusion. Impact: If Hallmark’s actions are shown to be intentional, they will lose significant strength in the battle against the incumbent user of the trademark “North Pole City.” This is the OKC store’s strongest argument and is where the most vigilant portion of the battle will likely take place. The key issue in the case is whether there is a likelihood of confusion between Hallmark’s use of the mark for products and the OKC store’s use of the name for the location of the store. This is the weakest link in the OKC store’s argument. Much is at stake in this case for the small entrepreneur that has taken necessary steps to protect their brands and their trademarks. A court decision in favor of Hallmark should cause small companies to ensure their trademarks are associated with products or services and not with a location or locations. A court decision in favor of the Plaintiff will make it more difficult for small businesses to develop trademarks that in any way may possibly be confused with a store with a trademark associated with a location, e.g. Brown’s Shoes (OK) v. Brown’s Shoes (KS). This case highlights the importance of registering trademarks at the federal level and not relying on state registration of trademarks for protection. Please contact our office if you have any comments or questions about this post. P.O. Box 720849 Oklahoma City, OK 73172 boaldinlaw Ph. 405.305.1046 Fax 866.914.7530 solutions@boaldinlaw Business Law – Entertainment Law – Dispute Resolution
Posted on: Sat, 28 Sep 2013 16:43:38 +0000
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