• Oura Inc. and Oura Health are in a legal battle over their names.
• A lawyer said trademark battles between large and small businesses are common.
• These battles can lead to expensive legal proceedings and changes in a company’s name and marketing.

The founder of Oura Inc. is going head-to-head with Oura Health, a 10-year-old Finnish startup with a $2.5 billion valuation that’s best known for the Oura Ring, a fitness and sleep tracker worn by celebrities, Olympic athletes, and tech investors.

Keane Veran launched Oura Inc. in 2017, selling antimicrobial products like hats, towels, and aprons. He filed for a US trademark in 2020 and received it the following year.

Last March, Oura Health filed a petition with the Trademark Trial and Appeal Board to cancel Oura Inc.’s trademark, claiming that the trademark could dilute Oura Health’s brand and confuse consumers.

If Oura Health prevails, Oura Inc. could lose its federal trademark, which would make it difficult to continue running the business without changing its name.

“They essentially demanded that we give up our name and our trademark for them,” Veran said. “I never really thought I would find myself in a legal predicament with a giant company.”

Michael Cohen, an attorney who founded Cohen IP Law Group and who does not represent either party, described this type of trademark proceeding between a large company and a small one as very common. It can lead to expensive legal battles that many smaller startups can’t afford, along with a change in the smaller company’s name and marketing.

It’s “a typical David-versus-Goliath situation,” he said.

Filing a trademark petition is a common move to weed out the competition

While registering a trademark is necessary to protect a business, it can be used against the business by another company that wants to expand into other locations or product categories.

Cohen said Oura Health’s petition is all about preventing Oura Inc. from keeping its federal registration. “The cancellation in itself doesn’t force them to change their name,” he added. “It just prevents them from getting the federal registration.”

He said it’s a very common scenario. “Larger companies, they grow what they do, and then they file for more and more trademarks and want a stronger portfolio, and then sometimes they run into a conflict like this,” he said.

One way a small company can fight back is by filing a counterclaim, as Veran did in July, saying Oura Health lacked bona fide intent to use the trademark.

Oura Health told Insider that both companies operate in the health and wellness industry, thus creating confusion.

Oura Health also filed a trademark opposition against Oura Inc.’s sister company, Ouragins, which applied for a trademark in 2021 for antimicrobial medical scrubs.

A representative for Oura Health said in a statement: “We first used our Oura mark long before Oura Inc. or Ouragin, Inc. were formed. We started out as a small business with limited resources, but we take our trademark rights seriously.”

US federal trademark rights are based on who used the mark first, which the TTAB will ultimately decide.

Many small businesses don’t stand a chance against large companies

In many cases small businesses don’t bother fighting back because the legal cost is so high that they may not have a company left after the ordeal. Cohen said that the proceedings can last years, especially if they’re escalated to a state or federal court.

“Very often they don’t go to the end,” he said. “Most cases settle. They don’t go all the way to trial because it’s expensive.”

But a small company can win “if you have good arguments and merit on your side and you can withstand enough,” Cohen continued. “So the main problem is who has a larger arsenal to withstand continuing in a litigation, because this is essentially like a lawsuit.”

Veran told Insider that his two companies had spent more than $60,000 on the proceeding and that he expected the cost to reach about $250,000 per company. Oura Inc. launched a campaign on YouTube and is selling T-shirts to help with legal costs.

Veran said that despite the expense, he’s not backing down. “It’s not just us that we’re fighting for — we’re fighting for our customers, we’re fighting for our employees, we’re fighting for our community,” Veran said. “I think trademark laws aren’t designed to protect small businesses.”

The dispute is currently in discovery phase, which means each party presents any supporting evidence, testimony, and documentation. This step is scheduled to continue through April and then pre-trial and trial phases will go through the end of the year. 

Source: Vietnam Insider