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Tag Archives: Portland

City of Portland Defends its Historic Sign in Federal Court

21 Tuesday Jul 2015

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

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Declaratory Judgment, Declaratory Judgment of Non-Infringement, Declaratory Judgment of Unenforceability, Marco A. Hernandez, Portland, Portland Sign, Trademark, Trademark Infringement

The City of Portland bought the famous Portland Oregon sign – commonly known as the “White Stag” sign or the “Made in Oregon” sign – Portland's state trademark registration in the signin 2010. The following year, in July 2011, the city registered its trademark with the state of Oregon. It appears that the City started charging license fees for commercial use of images of the famous sign around January 2013. Vintage Roadside is an Oregon company that aims “to bring back to light the authentic advertising graphics and logos of [] bygone businesses” by giving “people the opportunity to indulge in one of life’s great pleasures: the gift shop souvenir!” Vintage Roadside also runs an Etsy store that sells photographs of vintage roadside attractions.

According to the Complaint, the City of Portland’s attorneys contacted Vintage Roadside and asserted that their photograph violated the City’s trademark in the sign. Vintage Roadside filed a preemptive lawsuit, seeking a declaratory judgment, in the Multnomah County Circuit. Plaintiff alleges both that the City’s state trademark is unenforceable and that Plaintiff is not infringing and has not infringed any enforceable trademark relating to the sign. The City has removed the case to federal court. The heart of Plaintiff’s argument is that the City of Portland incorrectly filed its Vintage Roadside Etsy Screenshottrademark application. The recitation of services in the state trademark registration (as shown above, and on p. 9 of the Complaint below) is awkward. The only good or service listed on the application is, “The sign is a visual icon associated with Portland, and is seen all over the world when major events come to Portland.” In the space available to explain the mode or manner in which the mark is used, the City of Portland simply wrote, “An historical landmark of Portland, Oregon.” Vintage Roadside is alleging that the City of Portland was not using the mark in connection with the sale of goods and services and falsely certified that the mark was in use.

More updates to come as the case progresses…

Vintage Roadside LLC v. City of Portland

Court Case Number: 3:15-cv-01346
File Date: Monday, July 20, 2015
Plaintiff: Vintage Roadside LLC
Plaintiff Counsel: Robert A. Swider of Swider Haver LLP
Defendant: City of Portland
Defendant Counsel: J. Scott Moede and Simon Whang of Portland City Attorney’s Office; Shawn J. Kolitch of Kolisch Hartwell, PC
Cause: Unenforceability of Trademark, Non-Infringement of Trademark
Court: District of Oregon
Judge: Judge Marco A. Hernandez

View this document on Scribd

Voodoo Doughnuts featured on the USPTO Facebook Page

24 Monday Oct 2011

Posted by Kenan Farrell in Intellectual Property, Oregon, Trademark

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Portland, Voodoo Doughnuts

Pretty cool to see Portland’s own Voodoo Doughnuts featured on the United States Patent and Trademark Office’s Facebook Page today for “Creepy IP.”

There’s nothing creepy about the savviness with which Voodoo has been protecting their trademarks. Check out their expanding portfolio:

I wonder if they’ve tried to protect the pink box.

 

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