7-Eleven, Inc. anounced the filing of a lawsuit against its affiliated trade association NCASEF for trademark infringement and unfair competition on Friday, February 16.
The complaint, filed in U.S. District Court for the the Northern District of Texas, Dallas Division, lists 23 US trademark registration in connection with the convenience chain’s products & services, alleging that since 1946, 7-Eleven has been using its name in regards to commerce and convenience store services. The National Coalition of Associations of 7-Eleven Franchises (NCASEF) is the national trade association for 7-Eleven franchisees. It is originally founded in 1973 and is comprised of 46 Franchise Association members who represent more than 4,700 7-Eleven owners in 33 states.
Since 1966 7-Eleven has used the trademark ‘Slurpee’, US number 0,829,177, designated on semi-frozen soft drinks. Since 2009 the trademark has featured a swirl design. Many convenience stores offer products under the ‘Slurpee’ mark.
According to 7-Eleven, Inc., “in 2005, 7-Eleven and NCASEF achieved a licence agreement, which NCASEF was granted a non-exclusive licence to use three of the chain’s marks in agreed-upon ways and was prohibited to use the marks on promotional or printed items featuring a third-party name or trade identity. " However, 7-Eleven notice that 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 trademarks are allegedly displayed on event signage, business cards, 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 mislead the relevant public and cause confusion. As well as trademark infringement, the convenience store chain is claiming unfair competition, breach of contract & unjust enrichment. According to the spokesperson of 7-Eleven, 7-Eleven is disappointed that the association's leadership has chosen to "abandon" its "productive working relationship", which has spanned the last three decades, violates the licensing agreements.