City on losing side of trademark dispute involving iconic 'Portland, Oregon' sign
PORTLAND, Ore. —
Who owns the iconic "Portland, Oregon" sign that sits above the west end of the Burnside Bridge?
The basic answer is simple. The city of Portland owns the physical sign. It was acquired in 2010 and remodeled. But the question of who can use images of the sign, complete with the logo of a white stag leaping through the air, is harder to answer.
"We were granted that trademark in August of 2012, and so we've had it for more than five years," said Adam Milne, owner of Old Town Pizza & Brewing.
Milne's trademarks are for the image of the white stag in the category of beer, wine, and alcohol. He initially applied for the first trademark in 2011. He says there was never any objection from any city attorneys or officials. Since his trademark is now more than five years old, it's been granted "incontestable" status by the United States Patent & Trademark Office. That makes for a trademark that's on solid legal footing. If anyone in the business of beer, wine, and alcohol tried to use the image in any way, Milne would have legal recourse.
The city of Portland also owns trademarks for the white stag in certain categories. As reported in Willamette Week, the city has sent cease and desist letters to artists and businesses who attempt to use the image in their products and services. The city will allow the use of the white stag in certain instances through licensing deals.
Milne says the city has tried to pursue such deals with national beer companies, even though Old Town Brewing has the trademark in that category. He says because his trademark is so strong, the city has been blocked from getting other trademark protections.
"They applied for all sorts of categories, including beer, alcohol, soda, wine, T-shirts, glassware, mugs, hats," he said. "That wasn't our intention but all of those were blocked."
When Milne learned of the city being blocked in so many categories, he says he offered to sit down with city officials to negotiate.
"We immediately said, 'Hey, we want to help you, that's not our intention here,'" he recalled. "But when we met with them, they just had no interest in compromising or helping us just protect beer and alcohol."
Milne says the city is interested in licensing deals with national beer companies because of how lucrative they could be.
"We were all along calling them and trying to meet with them to work with them," Milne said. "We wanted to help our city. We were just shocked that they weren't interested in our help and also how they basically wanted to favor large national beer and alcohol companies over small local businesses."
Bryant Enge, the director of Portland's Bureau of Internal Business Services, wasn't available for an interview with KATU News. But he did send a statement:
People around the world associate Portland with things like gourmet food, bicycles, sneakers, and beer. Licensing the City trademark to companies in these and other industries helps maintain the image of Portland as a place where people want to live, work and visit. The City acquired the sign in 2010, before Old Town Brewing even existed. This positive image benefits all of us, including Old Town Brewing, and is probably why Old Town took the leaping stag as its trademark. Having taken the stag from the City sign, Old Town now wants to prevent the City from licensing its own trademark. The City does not believe this is fair.
The City understands Old Town’s concerns about other beer companies using the stag alone. To respond to these concerns, the City offered never to license the sign image without the outline of the state of Oregon and the words “Portland, Oregon”, and not to allow beer companies to use the words “Old Town”. The City even offered to require beer companies to use a disclaimer such as “Not affiliated with Old Town Brewing”. Old Town rejected all of these offers.
The USPTO has invited the City to provide more information about its ownership and licensing of the sign, which the City plans to do. Regardless of the outcome in the USPTO, the City believes it has the right to license the City sign based on its ownership of the sign, its Oregon trademark registration, and its federal copyright registration. The City will continue to do this in a way that the City believes does not negatively affect Old Town Brewing.
In response to the statement, Milne wrote:
We are very disappointed by the statement from the City of Portland. The city is wasting probably tens of thousands of taxpayer dollars in its losing effort to expand its federal trademark to include beer and alcohol, apparently intent on licensing to big beer, which would confuse consumers and hurt our brand. If the city really believes in Portland values, they need to come forward with details of their discussions to license to Anheuser-Busch, Maker’s Mark and other multinational corporations.
The U.S. Patent & Trademark Office has assigned “incontestable” status to Old Town Brewing’s federal trademark registration for its leaping deer design. Our simple request is that the city not license the leaping deer logo for alcohol, especially to large multinational beer conglomerates.
Milne also takes issue with how the city has asked for licensing deals in the past. He says his research has shown the city didn't apply for any federal trademarks involving the "white stag sign" until 2015, but they were pursuing licensing deals well before that.
"Trademark attorneys that I've talked to have just been kind of frustrated and upset about that," he said.
KATU News asked Enge if the city had applied for any other kind of legal protections for use of the sign, but hasn't heard back.
Milne knows the city has some trademarks for the sign, but he also questions why it ever decided to try and claim intellectual ownership after buying the physical sign.
"It's like the city buying a Nike ad billboard and then claiming that they own the Swoosh," he said.
Milne isn't sure what other steps the city will take in trying to find legal protection for beer, wine, and alcohol licensing deals. But he told KATU News their trademark applications in that category have been rejected several times and he's comfortable where he stands legally.
"We have a lot of brand recognition," Milne said. "We're now in grocery stores around town. If our beer bottle looked like Budweiser and other big brands, it would be confusing and it would be devastating for our brand."