You probably know of luxury fashion giant Saks Fifth Avenue, but how about “Snaks 5th Avenchew”? It should come as no surprise that the latter label is that of a pet treat company–one that specializes in treats as glamorous as the clothing of Saks–founded by New Jersey entrepreneur Carrie Sarabella.
But these organic eats didn’t have as smooth an entry into the market as Carrie might have hoped: the fashion company immediately challenged the brand in court, alleging trademark infringement and issuing a cease-and-desist. The case didn’t hold up in court, however, and Saks withdrew its legal action.
How did a scrappy young entrepreneur stand up to this Goliath? She knew her personal knowledge of the established legal precedent was, well, insufficient, yet she carried on undaunted and did the right thing: immediately seeking the advice of a copyright attorney. Her attorney did have the experience necessary–he sent a letter to Saks with the argument that fair-use law recognizes parody marks and has long held that they cause no harm to the established mark.
He had no few examples to choose from, including pet perfume label ‘Tommy Holedigger’ and chew-toy producer ‘Chewy Vuiton’. Each had stood successfully against infringement suits levied by the brands they parodied, Tommy Hilfiger and Louis Vuitton. Though such long-established trademark holders often carry a heavy clout, Saks’ lawyers saw quickly that past precedent stood against them. Less than half a year after issuing the cease and desist, Saks informed Carrie that the case would be dropped.
Not all infringement cases end so well. Companies routinely maintain a hair-trigger when it comes to intellectual property because, as we have seen, any precedent against them–including inaction–can be a giant hole in their defenses. That all it took to end this instance was a letter from an attorney is testament to the power of such precedent. Had she been forced to defend her trademark in court, the battle would have incurred significant costs against her business that may well have led to its insolvency.
What are the decisive factors in determining infringement? Courts typically look at the following:
Similarity. Does the offending mark have a similar appearance, meaning or pronunciation? Do the products or services target the same market?
- Distribution. Does the offending mark use the same distribution channels as the original mark?
- Confusion. Does the offending mark create confusion in the marketplace between it and the original mark?
- Strength. Trademarks that are descriptive of the goods or services they represent are considered weak and therefore harder to defend, where marks that are fanciful or arbitrary (i.e., Google or Apple) are considered strong. “Pepsi” is far stronger a mark than “Cola-Flavored Sugary Carbonated Beverage”.
The best way to avoid a trademark infringement lawsuit is to have your mark reviewed by an attorney. To learn more about avoiding business litigation, call us today at 612-206-3701 or via our contact form to schedule your appointment.
Image Courtesy of Stuart Miles | FreeDigitalPhotos.net