Portland City Officials Agree Not To Sue Over Portland Oregon Sign To Keep Court From Ruling On Trademark

from the punt dept

Mon, Jul 27th 2015 11:23pm — Timothy Geigner

Portland, the city, is back in the news again regarding Portland, the sign, and the city's insistence that it has a trademark over the landmark. We last checked in on this when Pabst, the brewery, had used an adaptation of the famous Portland sign to promote a concert in the city. The city then worked out an arrangement with Pabst so that it could keep using its sign imagery and keep the case out of the court. This was fully in the city's interests, because it's unclear on why a municipality should be granted a trademark on a local landmark's image when it isn't actually using that image in commerce.

It seems Jeff Kunkle, owner of the Vintage Roadside shop, which sells merchandise on Etsy, thinks similarly. When Portland found that Kunkle was selling merchandise with images of the sign, the city contacted him to arrange a licensing deal. Kunkle told them to go dangle, instead suing the city to have its trademark over the sign declared invalid.

Vintage Roadside, a Portland company that sells photos of the old "Made in Oregon" sign on Etsy, is suing the city of Portland, which recently sought a licensing payment from the company for use of the image. The suit, filed in Multnomah County Circuit Court on Thursday, asks the court to declare the city's trademark of the sign, which changed to "Portland Oregon" in 2010, invalid and unenforceable.

Oops. So, if you're Portland and you've been extracting money from individuals and businesses by way of a trademark that would likely be declared invalid should a judge look it over, what do you do? Well, you utilize the rules of the court to weasel your way out of the whole thing while not admitting that your sign trademark is bullshit, of course!

City of Portland officials are employing a creative legal maneuver to get rid of a lawsuit concerning its trademark of the "Portland Oregon" sign. Last week, the city told Kunkle's attorney, Robert Swider, that it was filing a covenant not to sue, which basically means that the city still believes the city owns the rights to the sign but won't try to enforce them against Kunkle—now or ever... By eliminating that point of contention, the city takes away Kunkle's standing to bring the lawsuit.

Which keeps the question over whether or not the city's trademark is even valid to begin with. The good news is that this specific story will hopefully get enough play in the Portland area to serve as a beacon to anyone the city might later approach for one of its "licensing deals." It should be clear at this point that the proper response to the city is to sue them outright.

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Filed Under: portland, trademark

12 Comments

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David, 28 Jul 2015 @ 12:21am

Oh wow.
So if a bank robber is caught, he can just offer a covenant not to pull the trigger on the teller and he's free to go?

Yes, I know. Bad comparison. Just not bad enough.
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That One Guy (profile), 28 Jul 2015 @ 12:55am

A perfectly working system*
So the city can continue to shake down anyone and everyone with a bogus trademark, and if anyone fights back, they just drop the case and move on to the next mark.

This case, and similar ones involving trademarks, show just how utterly broken the system is.

Want to get into the extortion racket business? Not a problem, just invoke the magic words, 'Copyright', 'Patent' or 'Trademark', and no matter how sleazy and/or pathetic your case is, you're good to go.

Mark fights back, and it looks like you might lose the case, and potentially the copyright/trademark/patent being used to shake people down? Also not a problem, just drop the case, and move on to the next person. Unless you were a bit too blatant in your shakedown demands, should your target try and force the issue, they not you, will be the ones feeling the displeasure of the court for 'wasting everyone's time', allowing you to continue sending threat letters far and wide.

*For extortionists.
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Anonymous Coward, 28 Jul 2015 @ 1:38am

Path of No Good
Shouldn't the case be tried under conditions prevailing at the time of filing the suit?
Surely the city of Portland can't turn back time and change the rules AFTER their previous action allegedly caused financial harm to an individual, the result of which was this lawsuit?
The city may try and forestall FUTURE suits by declaring that FROM NOW ON they will no longer try and extort money from local businesses, but the situation leading to the suit must be the basis of the case, no?
And will not those, who previously decided to pay the city's licensing fee demand their money back - through the courts, if necessary?
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G Thompson (profile), 28 Jul 2015 @ 1:54am

These idiots do understand that by filing a covenant that they have therefore stated that there alleged trademark can no be used by anyone without licensing whatsoever and ipso facto creates an untenable trademark.

In fact the covenant by filing it could actually negate any claim to a trademark ever of this sign.

Also the standing of Kunkle isn't specifically taken away by the covenant, and the standing by any affected parties (ie: citizens of portland) is definately not affected either
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- G Thompson (profile), 28 Jul 2015 @ 1:56am
  
  Re:
  *can now be used
  
  [stupid non editable klunky td interface.. I blame Tim.. either one.. doesn't matter :) ]
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- nasch (profile), 28 Jul 2015 @ 8:07am
  
  Re:
  These idiots do understand that by filing a covenant that they have therefore stated that there alleged trademark can no be used by anyone without licensing whatsoever and ipso facto creates an untenable trademark.
  
  Isn't the covenant only to not sue that one business?
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  - G Thompson (profile), 28 Jul 2015 @ 11:53pm
    
    Re: Re:
    yes, though they are also not requiring a license which favours that one business over everyone else that has had to license.
    
    Equity becomes a major problem then.
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Sheogorath (profile), 28 Jul 2015 @ 3:18am

This was fully in the city's interests, because it's unclear on why a municipality should be granted a trademark on a local landmark's image when it isn't actually using that image in commerce.
Are you sure about that? Isn't taking licensing fees from the unsuspecting a form of trade?
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Tanner Andrews (profile), 28 Jul 2015 @ 7:00am

Covenant Not to Sue
Without some analysis of the covenant, and whether it is an agreement with consideration on both sides or just a paper from the city, it is hard to say how much protection it would offer. It may eliminate the case and controversy, if it releases the plaintiff and everyone in any wise associated with him, now and forever. Otherwise, next week's Newcorp Sign Pictures, LLC, of which he is the president, has the same issue and he still has the same need for a declaration.

This sort of problem evades review and is likely to recur. Courts sometimes address such even when the original controversy is moot.

If the covenant works and is broad enough to eliminate his case and controversy, then we need to wait for Newcorp Free Automatic Sign Image Sublicensing, LLC, to see how this works out.
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- Anonymous Coward, 28 Jul 2015 @ 8:53am
  
  Re: Covenant Not to Sue
  Otherwise, next week's Newcorp Sign Pictures, LLC, of which he is the president, has the same issue and he still has the same need for a declaration.
  
  Yes, this COULD happen, but there's no indication that it's likely. The court isn't ordinarily going to deal with a hypothetical. If he actually had Newcorp Sign Pictures ready to use those pictures, that would be a different story, but "I might want to form a new company someday" does not give him standing to sue.
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BearGriz72 (profile), 28 Jul 2015 @ 7:15am

Considering that the sign started out belonging to a sugar company and then 'White Stag', the whole thing seems ridiculous... (and I live in Portland

http://en.wikipedia.org/wiki/White_Stag_sign
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Maurice Michael Ross (profile), 28 Jul 2015 @ 3:32pm

Portland Sign
The flaw in this analysis is the assumption that Portland is not using the sign in commerce. That is probably wrong. Portland's lawyers made a wise strategic decision that it is not worthwhile economically to fight this case against this individual user. But this does not mean that Portland's lawyers think the trademark is weak--as a trademark lawyer on both sides of these issues I can tell you from painful experience that these decisions are driven primarily by the high economic costs of litigation--not the risks that a trademark will be invalidated.
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