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19 February 2018Trademarks

7-Eleven files icy TM claim against trade association

Convenience store chain 7-Eleven has filed a claim against its affiliated trade association for trademark infringement and unfair competition.

7-Eleven filed the complaint against the National Coalition of Associations of 7-Eleven Franchisees (NCASEF) in the US District Court for the Northern District of Texas, Dallas Division, on Friday, February 16.

According to the complaint, 7-Eleven has been using its name in connection with commerce and convenience store services since 1946.

NCASEF is an independent trade association for the 7-Eleven franchisees across the 30 US states where the convenience store conducts business.

Since 1966 7-Eleven has used the trademark ‘Slurpee’, US number 0,829,177, for its semi-frozen soft drinks. The mark has featured a swirl design since 2009. Many of the more than 7,000 convenience stores offer products under the ‘Slurpee’ mark.

7-Eleven said “millions of dollars have been spent in advertising and promoting these products” under the “inherently distinctive” marks, which “consumers know and trust as symbols of quality and value”.

The complaint lists 23 US trademark registrations relating to the convenience chain’s products and services, alleging that the marks are “famous” and “not limited” to those listed in the claim.

In 2005 7-Eleven said it entered into a licence agreement with NCASEF.

The trade association was granted a non-exclusive licence to use three of the chain’s marks in agreed-upon ways, relating to certain activities. The agreement includes “numerous restrictions” and “limits” the use of the marks.

In particular it “prohibits the use” of the marks on promotional or printed items featuring a third-party name or trade identity.

According to the claim, NCASEF is using the marks in ways not authorised by the agreement, including on the website, and is also using a number of 7-Eleven’s other marks without permission. This includes the ‘Slurpee’ mark and its distinctive swirl design.

The infringing marks are allegedly displayed on event signage, business cards, and promotional materials, as well as on print materials featuring third-party marks.

7-Eleven said the unauthorised use of the infringing marks is likely to deceive customers and cause confusion. As well as trademark infringement, the convenience store chain is claiming unfair competition, breach of contract, and unjust enrichment.

7-Eleven has requested that NCASEF is preliminarily and permanently enjoined from using the infringing marks, that it destroys all materials bearing the marks, and that profits sustained as a result of the infringement and unfair competition are tripled and recovered by 7-Eleven.

A spokesperson for 7-Eleven said it is disappointed that the association's leadership has chosen to "abandon" its "productive working relationship", which has spanned the last three decades, in "violation of the licensing agreements".

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Trademarks
11 September 2018   Convenience store chain 7-Eleven yesterday accused fashion brand Original Penguin of infringing trademarks related to the chain’s popular slushie drinks.