Will the Hallmark Crown be Tarnished? North Pole City Files Trademark Infringement Suit Against the Greeting Card Company

DKG Enterprises, Inc., a company that runs a store called North Pole City in Oklahoma City, filed a trademark suit in the Western District of Oklahoma on Sept. 9, 2013 against Hallmark Cards, Inc. and Hallmark Licensing, LLC.

North Pole City has been in existence in Oklahoma City since the early 1990s and primarily engages in selling holiday merchandise. It claims to be one of the largest Christmas merchandise stories in the county. It has also sold products online since 1995 and can be found at northpolecity.com. The trade names “North Pole City” and “North Pole City Gifts & Collectibles” were registered with the Oklahoma Secretary of State in 1997.

Hallmark, a Missouri corporation, recently released plans to launch a new product line for Holiday 2014 called “North Pole City.” Hallmark Licensing filed 12 trademark applications on June 6, 2013 for various products including a series of fictional books, stationery, greeting cards, wrapping paper, aprons, mittens, socks, music boxes, watches, 3-D goggles, production of motion pictures, Christmas tree ornaments, illuminated outdoor ornaments and candles.

Plaintiff claims that there is a strong likelihood of confusion between its products and those that will be produced by Hallmark and seeks a declaratory judgment. It points out that the names are “substantially and confusingly” similar and that the products are being marketed in the same geographic location, which could confuse customers. It argues that this is an infringement of their trade name under the Lanham Act and allowing these products to be marketed under the name “North Pole City” will irreparably damage plaintiff’s mark. Plaintiff also makes claims of unfair competition and false, misleading and deceptive trade practices by the defendant.

Plaintiff asks in its complaint for preliminary and permanent injunctive relief. If granted, this would stop the defendant from using the name immediately as well as prevent the use in the future.

The final claim for relief cited in plaintiff’s complaint is for an “equitable accounting from the Defendants for any and all sales and/or profits derived by Defendants from said actions, infringement and Defendants’ other unlawful acts related to Defendants’ use of ‘North Pole City’ trademark and/or trade name.”

Plaintiff does not claim to have a federally registered mark that would fall under the protections provided by the Lanham Act § 1115(a). Common law rights may be available to plaintiff, however they may only be recognized in the geographical region where the party exercising the common law rights has a presence. In this instance, Plaintiff’s enforcement of its common law rights could be limited to Oklahoma.

No answer to the complaint has been filed to date.

For more information:

• Case 5:13-cv-00967-M
• Lanham Act, 15 U.S.C. § 1051 et seq.