7-Eleven sues Original Penguin over slushie trademarks

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

The company filed its complaint (pdf) at the US District Court for the Northern District of Texas, Dallas Division.

7-Eleven said it has been using the trademark ‘Slurpee’, and other marks incorporating the word, since 1966. ‘Slurpee’ is used in relation to semi-frozen soft drinks as well as clothing.

Other marks used in connection with ‘Slurpee’ include ‘Brainfreeze’ and a distinctive swirl mark in red and blue, the suit added.

According to the complaint, US fashion brand Original Penguin markets and sells a shirt which depicts images of spilled semi-frozen soft drinks in cups that bear a design confusingly similar to the swirl trade dress that 7-Eleven uses.

7-Eleven, which has more than 7,000 stores throughout the US, accused the fashion brand of selling clothing that prominently displays its trademarks, and included trademark infringement, trademark dilution, counterfeiting, and unfair competition claims in its lawsuit.

The convenience store chain said that the fashion brand uses a model wearing the shirt and “unmistakeably” drinking a 7-Eleven slushie to promote the product and “solidify” the association between Original Penguin and 7-Eleven.

7-Eleven said that the unauthorised use of the ‘Slurpee’ marks removes its ability to control the nature and quality of goods provided in connection with them, and places 7-Eleven’s “valuable reputation of goodwill” in the hands of Original Penguin.

It has asked the court to prevent Original Penguin’s use of the marks and to order the destruction of all materials which display them.

The convenience store chain has also requested triple damages and all profits arising as a result of the infringing activities, or statutory damages for counterfeiting—whichever is greater.

This is not the first complaint filed by 7-Eleven in relation to its slushies.

In February, the chain filed a claim against its affiliated but independent trade association, the National Coalition of Associations of 7-Eleven Franchisees, for using the ‘Slurpee’ marks in a manner prohibited by the parties’ licensing agreement.