Who owns the name Pendleton?

Pendleton isnt just the name of an Oregon town its also a bone of contention in a trademark infringement lawsuit filed this week in U.S. District Court.

The big dogs fighting over the bone are a pair of century-old corporations Pendleton Woolen Mills and the (Pendleton) Round-Up Association which share a long, and, until lately, harmonious connection. The Woolen Mills filed a 13-page complaint that accuses the Round-Up Association of using the word Pendleton in a trademark that is confusingly similar to the Woolen Mills. The trademark in question appears on the label of Leter Buck Cologne, which says, Official fragrance of the Pendleton Round-Up.

Round-Up Association President Dennis Hunt and his fellow Round-Up directors found out about the lawsuit Tuesday by email.

The Pendleton Round-Up has had a long and valuable relationship with the Woolen Mills for many years, Hunt said. Were very disappointed they would sue us.

Hunt kept his voice low as he spoke into his cell phone, not wanting to disturb a conference call with the associations attorney, Sheila Fox Morrison. Hunt said he couldnt speak further about the suit, sounding uncharacteristically downcast.

The Woolen Mills also remained relatively mum. A press release from the company explained the basis of the trademark infringement complaint.

Pendleton Woolen Mills has been working as a community volunteer with Pendleton Round-Up Association for over 100 years in a close relationship 

and working partnership. Trademark protection laws are complex. A disagreement over the last six months unfortunately could not be resolved in a conventional manner. We are not able to comment further while these legal issues are pending.

Morrison, intellectual properties attorney with Davis Wright Tremaine in Portland, said the way is not yet clear. She and representatives of the Round-Up Association are in the process of figuring out their first steps. 

The complaint is a fairly narrow issue, Morrison said. The objection by the Woolen Mills deals with use of the name Pendleton Round-Up in connection with its Leter Buck Cologne product.

The lawsuit, Morrison said, came after the Round-Up Association formally filed a trademark application of the phrase Pendleton Round-Up for use with fragrances.

We didnt make any claim to the word Pendleton by itself, she said. The trademark is Pendleton Round-Up.

Morrison expressed hope the two parties could come to an agreement before facing each other in court.

Wed like to keep the lines of communication open, she said. There is history here between two 100-year-old organizations.

The complaint makes the case for federal trademark infringement, unfair competition and trademark dilution, saying the defendants actions demonstrate an intentional, willful and malicious intent to trade on the goodwill associated with Pendletons (Woolen Mill) federally-registered Pendleton (trade)marks

Pendleton Whisky, produced through partnership between the Round-Up Association and Hood River Distillers, is not mentioned by name in the formal complaint. However, the background section of the document mentions a 2003 trademark licensing agreement. The two-part agreement features alliances between the Woolen Mills and a third party ostensibly Hood River Distillers and the Round-Up Association and the same third party. The licensing agreement grants use of the Pendleton trademark in branding and marketing Pendleton Whisky. Pendleton Woolen Mills crafted blankets and other products using the Pendleton Whisky logo, some which includes the classic bucking horse of the Pendleton Round-Up.

The cologne issue is much narrower, Morrison said. 

The case could get ugly, but Morrison said she hopes the two Pendleton organizations wont go the distance in this legal battle. 

We think we can work it out, Morrison said. Weve coexisted for 100 years and we can coexist for another 100.

A call to Pendleton Woolen Mills attorney, Vicki L. Smith, was not returned by press time.