On Your Side: Trademark dispute pits small local business against big corporation
A small business created by two Orange County brothers is taking on a multibillion-dollar global company, because that company wants the local business to change its name.
There are a lot of companies that have the same name: Dove Soap and Dove Chocolate; United Airlines and United Van Lines; Pandora Jewelry and Pandora Music. But not every company is happy to share.
Twenty-five-year-old Keane Veran started his company Oura out of his Orange County garage in 2017. The name of the company was inspired by the word "origami."
"There's a Japanese legend: If you fold a thousand origami cranes, a wish is granted," said Veran.
Keane Veran's own wish was granted when he met then-President Obama in 2011. Veran was fighting leukemia at the time.
Oura sells antimicrobial hats, towels and other home goods. In 2020, Veran filed for a trademark, which was granted a year later. And that's when his legal trouble began.
"They want us to give up our name and our brand entirely," said Veran.
"They" are the owners of Oura Ring, a company founded in Finland that has been in business since 2015. Oura Ring has filed a trademark dispute against Veran's Oura. But it's not unique for multiple companies to share the same name.
"The law is very comfortable, and the American public are very comfortable, and the marketplace is very comfortable with multiple people using the same name in different product areas and different services," said Loyola Marymount University Law Professor Justin Hughes. "So we have no problem with there being United Van lines and United Airlines."
Trademark law expert Hughes said it's only a problem when two companies with the same name offer similar products. Oura Ring did trademark the name first, but that was for "devices to be placed on the human body." Oura Ring didn't apply for a trademark to include bedding and hats until 2021 -- a full year after Veran applied for his.
"The real question or the core question in trademark law is whether someone's use of a word or symbol or device causes a likelihood of confusion," said Hughes.
An Oura Ring company spokesperson says that's exactly what is happening, telling KCAL News: "Oura is aware of actual consumer confusion, which is harmful to our respective businesses and our consumers."
"For us, it just feels like it's wrong and we don't want to be giving up our name just because someone with more money and more power is telling us to do so," said Keane Veran.
Oura Ring tells KCAL News it did try to reach an amicable settlement with the Veran brothers without involving lawyers, and it was met with "unreasonable monetary demands." The Veran brothers say if they had to change their company name, it could shutter their business.
Oura Ring's full statement to KCAL News:
"ŌURA is a privately owned health and wellness company dedicated to improving the way people live by providing the tools and personal guidance needed to help individuals realize health as a daily practice. Founded in 2013, ŌURA now has about 400 employees. We opened our San Francisco, California office in 2015, and although Oura Ring has become widely popular, we also have partnered with a variety of companies in and beyond the health and wellness space, including rest and recovery accessories, women's health offerings, sports and activity tracking platforms, fashion, and apparel.
"ŌURA established trademark rights in its ŌURA, OURA, and Ō trademarks as early as 2015 in the U.S., and we have registered our trademarks around the world. Trademark rights in the U.S. are based on first use, not first registration. We first used our OURA mark long before OURA Inc. or Ouragin, Inc. were formed.
"Trademarks are one of the most valuable assets that any company owns, and rigorously defending its trademarks is a standard business procedure for any responsible company. Under U.S. law, if any company does not proactively protect its trademarks, that company's rights may weaken, their consumers may become confused, and they could ultimately lose rights to their brand. We started out as a small business with limited resources, but we take our trademark rights seriously. In 2021, we established a system to actively monitor and take action to prevent adoption and use of other confusingly similar and identical OURA marks.
"OURA Inc. and Ouragin, Inc. categorize themselves as health and wellness companies, and they market their goods to the same consumers seeking ŌURA's health and wellness products. Our dispute with OURA Inc. and Ouragin, Inc. began in 2021, after we first became aware of OURA Inc. and its U.S. trademark registration. We initially contacted OURA Inc. directly, without involving outside counsel, with hopes of resolving the matter amicably. We offered a generous timeline to transition to a new mark and sell through existing inventories. Our offer to reach an amicable resolution was met with an exorbitant and unreasonable monetary demand that had no basis in actual transition costs.
"After we became aware of actual confusion and settlement efforts stalled, we initiated proceedings before the Trademark Trial and Appeal Board (TTAB), which is an administrative body of the USPTO. Contrary to the narrative Mr. Veran has created in his videos, proceedings before the TTAB do not constitute a "lawsuit," and the TTAB does not have the authority to award monetary damages; it may only make determinations about whether marks are entitled to be registered with the USPTO. Through the TTAB, trademark registrations may be canceled if, like here, it can be established that the petitioning party used the mark first and before the other party obtained its registration.
"We have requested that the TTAB cancel OURA Inc.'s registration for OURA and refuse the registration of OURAGINS. But this is not a one-sided dispute. Undisclosed in Mr. Veran's videos is the fact that OURA Inc. is seeking to cancel our prior-registered ŌURA and OURA trademarks.
"Our first priority is our members and customers. We respect the missions of OURA Inc. and Ouragin, Inc., and we do not wish to prevent them from doing business. But actual consumer confusion has arisen between our companies–about which Mr. Veran is aware–and that is not good for his or our customers. We simply want our respective businesses to operate fairly with distinguishable brands and company identities, and we remain committed to finding an amicable solution if possible. We recently made another effort to resolve this matter with a settlement offer, including a generous donation to the Make-a-Wish foundation on Oura Inc.'s behalf, but Mr. Veran refused.
"ŌURA established trademark rights in 2015, and our claim is based on trademark law. We do not agree with Mr. Veran's characterization of this dispute. We are concerned by his videos and efforts to slander ŌURA, which we believe are motivated by an attempt to support his settlement demands."
