But Roers Management’s trademark and litigation counsel said the attorney’s claims to the government were appropriate and truthful.
Roers Cos., founded by Kent and Brian Roers and based in Minnetonka, Minn., has filed a counterclaim in response to the Fargo-based Roers Management’s lawsuit filed against them in early December.
Founded by North Dakota Sen. Jim Roers, R-Fargo, Roers Management asked a federal judge to rule it has exclusive rights to use the Roers trademark — that would include use of the Roers Cos. title — when it comes to development and construction ventures. Roers Management claims it is the original user of the Roers mark. It asserted it did not give Jim Roers’ nephews, Kent and Brian, permission to use the name.
Roers Cos. denied any wrongdoing in its answer to Roers Management’s complaint. It claimed Roers Cos. was “obtained through extensive and continuous promotion of its products and services under the mark” that has become distinctive and well-known throughout the Midwest.
Attorneys for the nephews said in the counterclaim that Roers Cos. started using that name first, alleging Roers Management has wrongfully used the Roers Cos. title.
Jim Roers founded his company in 1976. Over the years, it has expanded its services to include construction, development, design, real estate and property management.
The business has operated under different names. It also refers to itself as Roers Cos., according to court documents.
Roers’ nephews founded their company in 2012 as a real estate company, though the name Roers Group dates back to 2004 as a registered name in Minnesota. In 2018, it registered the Roers Cos. trade name with Minnesota.
Roers Management attempted to trademark the Roers name with the U.S. Patent and Trademark Office in June 2019, but Roers Cos. opposed the filing.
Surnames typically cannot be trademarked unless the conditions of “acquired distinctiveness” can be met. The name would have to take on a secondary meaning that is well-known to consumers.
For example, Menards is widely known for selling hardware and home improvement supplies, so it is more than just a surname and qualifies for the secondary meaning.
Roers Management claimed in trademark documents it has met that standard, a claim Roers Cos. disputes.
In its counterclaim, Roers Cos. noted a response to office action form, which is used to address legal issues with the requested trademark. Roers Management’s general counsel signed the form and attested the Roers mark has “become distinctive of the goods/services through the applicant’s substantially exclusive and continuous use of the mark in commerce.”
“This was a willful false statement,” Roers Cos. alleges in court documents.
The counterclaim does not name the general counsel, but Roers Cos.’ attorneys attached the response to office action form. It was signed by Fargo attorney and North Dakota Rep. Shannon Roers Jones in March. Roers Jones is Jim Roers’ daughter and a Fargo Republican.
The counterclaim argued the general counsel had “actual and longstanding knowledge of Roers Companies’ use” of the Roers Cos. name. That would contradict what she said on the form, Roers Cos. alleged.
Those who fill out federal forms are warned making false statements could result in a fine or imprisonment, the counterclaim noted. The application for the trademark also could be invalidated if statements are found to be false.
Roers Management is “confident in its claims and declarations,” attorney Ashley Bennett Ewald said in a statement on behalf of Roers Management. Roers Jones’ statements were “accurate and appropriate to make on the form, as infringing uses like the Defendants’ use do not count against Roers Management’s claim of substantial exclusivity,” Bennett Ewald added.
“My client has been in business under the Roers mark for many decades and has worked hard to build and achieve recognition of its brand,” Bennett Ewald said. “While it would have preferred not to have to litigate this matter, it is following the process to protect its business and the employees and customers who rely on it.”
An attorney for Roers Cos. declined to comment for this article.