Timothy Geigner over at our much beloved TechDirt recently wrote about the City of Portland’s trademark spat with beer brewer Pabst (Timothy’s article is here). According to PortlandLive and Portland Mercury’s blog, the spat is over a sign claimed to be an iconic part of Portland, which sits atop the White Stag Building in Portland’s Chinatown. You can take a look at Portland’s “Stag” sign alongside Pabst’s sign here (via the Oregonian/Oregon Live). The mostly neon sign features a leaping stag at its top and is shaped like an outline of the State of Oregon. It also has “Portland Oregon” in its center written in an ‘old-timey’ font, and “Old Town” at the bottom of the sign.
According to Portland’s city government website, it issues licenses for use of the sign in films, merchandising, event promotion and other commercial purposes. The licensing fees for a large company appear to be $100 plus a “donation” of $28,000 (for a year’s upkeep of the sign) and administrative fees for preparing and negotiating the license. The City website also has a section on “Derivative Works”, which includes provisions that “removal or changes to the Stag” part of the sign are “Not Allowed.”
According to documents from Portland’s City Attorney’s Office (currently the link is bad, but excerpts can be found in the Portland Mercury Blog, here), the City holds an Oregon State trademark registration in the sign. License negotiations between the city and Pabst took place sometime before Pabst’s 2014 music festival, but the parties failed to reach an agreement. The City indicated that Pabst’s planned use wouldn’t have complied with city guidelines, because Pabst’s event was only open to those over 21 years old. Apparently, the city claims that sign’s image may not be used for anything that isn’t accessible to people of all ages.
According to the Portland Mercury article, the City sent a cease-and-desist letter to Pabst after it started promoting its 2015 event with Pabst’s (allegedly) own version of the “Stag sign” (MTV News’ Emily Blake’s article shows the 2014 Pabst music festival version, here).
The City’s last City Council Agenda on January 7, 2015 indicates that the City was considering a resolution authorizing the City Attorney to file suit against Pabst. The vote on that resolution, though, was rescheduled to January 28, 2015.
Hopefully, the parties will come to an agreement that avoids litigation. If not, though, it would be interesting to see a federal court’s take on the dispute. While changing/removing the “Stag” portion of the sign might possibly be an issue as to whether a party had violated Portland’s city code, it likely would not figure in on the trademark issue (other than possibly considering the totality of differences as to a likelihood of confusion). Also, it seems to us that the city might be confusing a likelihood of confusion with the “brings to mind” concept. In other words, just because one logo brings to mind another logo, it does not necessarily follow that the logo or mark creates a likelihood that consumers would be confused as to the source of goods/services offered under the respective logos or marks.
The City of Portland, though, may also claim that the mark is a ‘famous mark’ and that would be a slightly more complicated story. Hopefully, though, the parties will reach an agreement before any litigation happens and puts everyone in a very bad mood.