Brand BattlesSM
Trademark Disputes of Interest
By: DEAN R. KARAU
February 2009
Trademark disputes pit brand against brand, and can be some of the most contentious litigation.
Here are snapshots of some cases which piqued our interest, not necessarily because they will illuminate great legal principles, but because they just seem darn interesting.
Is the Big Outdoors Big Enough for Both “The Original Outdoor Outfitter” and “The Original Outdoor Clothing Company?”
Clothing manufacturer Woolrich, Inc. doesn’t think that its trademark, THE ORIGINAL OUTDOOR CLOTHING COMPANY, and the trademark of retailer Eddie Bauer, Inc., THE ORIGINAL OUTDOOR OUTFITTER, can peacefully co-exist in connection with goods and services related to the big outdoors. So Woolrich recently sued the Bellevue, Washington, specialty retailer for trademark infringement, claiming that the parties compete for the same customers in the outdoor clothing market and distribute their clothing through the same channels of trade.
Woolrich also alleges that Eddie Bauer purchased “keyword advertisements” from Yahoo.com so that a consumer keying in the search term “Woolrich” would see a link to Eddie Bauer among the search results. (See my colleague Cynthia Moyer’s article on key words, Take Care When Choosing Words for Sponsored Links, in the September 2008 edition of Trademark Topics.SM)
Woolrich claims that it has been using its mark in connection with goods whose total dollar value exceeds $500 million. It is asking for damages and an injunction.
Woolrich began using its mark in 1997, and has one U.S. registration and two pending applications for the mark. In all three, Woolrich has agreed that it has no rights in the term “outdoor clothing company” by itself but only as part of its entire mark.
Eddie Bauer began using its mark in 2008, and has four U.S. registrations and two pending applications for the mark. In all six, Eddie Bauer, like Woolrich, has also agreed that it has no rights in the term “outdoor outfitter” by itself.
That means, essentially, that the company’s are fighting over the term “THE ORIGINAL.”
Words like “original,” “super,” and “smart,” however, are often considered to be “laudatory” terms capable of only limited protection under trademark law. R & A Bailey & Co Limited even had to disclaim rights in the word “original” in its application for BAILEYS THE ORIGINAL IRISH CREAM (and it disclaimed rights in IRISH CREAM, too).
This means that Woolrich and Eddie Bauer are gearing up to spend a lot of time and money fighting over pretty weak trademarks.
In this age of green, perhaps both companies should consider donating to a worthwhile outdoor cause the money they otherwise will be spending on legal fees over weak marks. While some of those in my profession might earn a little less as a result, it would be big of both companies to do something really worthwhile for the Big Outdoors.
Woolrich, Inc. v. Eddie Bauer, Inc., No. 09-0016 (M.D. Pa).
The Movie Twilight Inspires a Perfume . . . And a Lawsuit?
French fashion house Nina Ricci is known for its famous perfumes, including L’Air du Temps, Farouche, Capricci, Fleur de Fleurs, and Eau de Fleurs.
More recently, Nina Ricci has included a new fragrance, Nina, in its product line. The Nina perfume bottle is a part of the marketing of the fragrance.
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Imagine Nina Ricci’s surprise when a promotional fragrance for the Hollywood blockbuster Twilight hit the market recently.
The Twilight perfume features the movie’s stars Robert Pattinson and Kristen Stewart on the box, and the perfume’s bottle is described as “a red apple and comes decorated with silver leaves and lid.”
Nina Ricci announced that it will commence legal action against the makers of Twilight perfume.
When You Think of Mouse Pads, Who Do You Think of?
Time’s Up, Inc. is a promotional products company. It uses the trademark DIGISPEC for computer mouse pads and wrist rests, and it owns a U.S. trademark registration for the mark. It also uses DIGISPEC in other marks, such as the one displayed on its website located at www.digispec.com:
ActNow Media, Inc., also is a promotional products company, and it also sells promotional mouse pads, among other products. ActNow Media recently sent out by email the flyer on the right advertising its own line of computer mouse pads, mats, and accessories. (Apparently ActNow Media also markets Time’s Up’s DIGISPEC brand mouse pads as well.)
Time’s Up was not pleased when it saw the flyer. It filed suit, alleging that ActNow Media’s use of the term “When You Think of Mouse Pads” infringes Time’s Up’s rights in its mark “When You Think of Mouse Pads . . . .”
The definition of a trademark includes any word or combinations of words which help consumers identify the source of a product. It is this source-identifying feature that separates a trademark from an ordinary word or phrase. A consumer does not need to be able to identify the name of the source of the product, but the consumer must be confident that there is only one source of a product sold under a particular trademark.
Time’s Up is hoping that its phrase “When You Think of Mouse Pads . . .” creates a one-to-one correspondence in the minds of the relevant consumer, between the phrase and a source of mouse pads. If Time’s Up can establish that, then ActNow Media’s time is likely up.
See Time’s Up, Inc. v. ActNow Media, Inc., Case No. 09-cv-00131 (D. Nev. Filed Jan. 20, 2009)