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.
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JAntonelli
Jeffrey Antonelli is a member of the federal trial bar of the Northern District of Illinois and is admitted to numerous federal courts around the country. He has been a civil litigator nearly 25 years in a broad range of actions representing corporations and individuals as plaintiffs and defendants in state and federal court. Jeffrey has been interviewed by the media many times, including Bloomberg BNA, NBC, The New York Times, Chicago Lawyer, Chicago Tribune, and the longstanding lawyer’s publication Chicago Daily Law Bulletin. Prior to forming Antonelli Law Ltd. in 2007 Jeffrey worked for several litigation boutiques in Chicago’s Loop as well as a full service firm. His litigation experience includes hotly contested issues in intellectual property, business, insurance, and consumer fraud. He is an adviser to the Illinois Board of Higher Education Advisory Council for Private Business and Vocational Schools (PBVS), and was a member of the Illinois State Bar Association Education Law Section Council from 2012-2013. Jeffrey is especially proud of his work representing hundreds of students defrauded by improperly accredited educational institutions, including as certified class counsel. Before attending law school, Jeffrey was interested first in business, and then in biomedical ethics. These interests led him to graduate from the nation’s largest philosophy department at Loyola University in Chicago, where some of his favorite (and most challenging) subjects were cognitive science and philosophy of science. During college he held positions at the University of Chicago’s Ben May Institute; as a medical assistant for a University of Chicago foot and ankle surgeon; and volunteered in the emergency room at the University of Chicago Hospitals. These experiences led to studying health law at the DePaul College of Law where Jeffrey earned his law degree and a certificate in health law. At that time DePaul’s Institute for Health Law was consistently ranked in the top 10 health law specialty programs nationwide. During law school Jeffrey immersed himself in studying the practical and public policy aspects of health care through internships at the American Medical Association in Chicago, and on Capitol Hill at the Governmental Relations Office of the Association of American Medical Colleges in Washington, DC. Jeffrey has concentrated in civil litigation throughout his legal career, and is a member of the federal trial bar of the Northern District of Illinois, the Central District of Illinois federal court, and all federal courts of Colorado, Wisconsin, Michigan, and Indiana. In addition, he is a member of the DuPage County Bar Association and the Illinois State Bar Association. Jeffrey prides himself on his strong personal ideals, passionate, ethical advocacy, and working hard to bring the best possible results for his clients. He also maintains a special interest in cases involving fraud. Whether due to good parenting, his family’s law enforcement employment, undergraduate studies in philosophy including ethics, or a fortuitous outcome of good breeding, one essence of Jeffrey’s character is a drive to root out the truth behind fraudulent practices.