March 6, 2019 Brown Bag CLE: Concurrent Trademark Uses in Different Regions of the United States: Dawn Donut Revisited

Topic:   Concurrent Trademark Uses in Different Regions of the United States: Dawn Donut Revisited

In 1959, the Second Circuit held in Dawn Donut that a trademark holder with a federal registration could not necessarily and automatically enjoin infringers across the United States. Written at a time before the world-wide-web, the court stated: “If the use of the marks by the registrant and the unauthorized user are confined to two sufficiently distinct and geographically separate markets, with no likelihood that the registrant will expand his use into defendant’s market, so that no public confusion is possible, then the registrant is not entitled to enjoin the junior user’s use of the mark.” This CLE will revisit Dawn Donut. Our speaker will survey recent case law on the subject, particularly with a view to better understanding its meaning and application in the Internet Age.

Materials:  Dawn_Donut_CLE

Speaker:  Tomás Gómez-Arostegui is a professor at Lewis & Clark Law School, where he is the Kay Kitagawa & Andy Johnson-Laird IP Faculty Scholar. He teaches trademark law, civil procedure, torts, and a seminar on the history of the common law.

Brown Bag CLE Schedule and Material: Visit the IP Section’s website at for upcoming Brown Bag CLEs and to download materials for this CLE and past presentations. (CLE materials will be uploaded soon after the CLE.)

MCLE Credit: Applying for one (1) general credit from the Oregon State Bar

Date:               March 6, 2018

Time:               12:00 pm – 1:00 pm

Where:            The Cleaners @ Ace Hotel Portland, 403 SW 10th, Portland, OR 97205, (503) 228-2277


$20 without lunch (you may bring your own lunch, food carts are just 2-blocks away)

$43 with boxed lunch provided by Clyde Common (menu selection provided at registration link, below). For boxed lunches, your registration with lunch order must be received by noon, Friday, March 1. Otherwise, you may register any time prior to the meeting or at the door.

* Law students:  May attend for free depending on seat availability; email the registration contact person indicated below.

Please bring payment to the CLE (check or cash). Sorry, no credit cards can be accepted. Please make checks payable to: Oregon State Bar IP Section.

At least 48 hours’ notice is required to cancel your pre-ordered lunch with a refund. No-shows will be charged for pre-ordered lunches if 48 hr cancellation notice was not received.

The organizer for this CLE is: Ian Gates ([email protected])

Registration: Please fill-out the registration form provided at