Lontex Corporation v. Oakley, Inc. and Tips for Selecting a Trademark
Lontex Corporation v. Oakley, Inc.
In September of 2013, Oakley, Inc. was sued for trademark infringement for using the trademark / phrase “Sweat it Out” for sweatbands. The plaintiff, Lontex Corp., is a manufacturer of athletic apparel and owner of several United States trademark registrations for the mark SWEAT IT OUT for athletic apparel, including sweatbands.
The complaint alleges that Oakley’s use of SWEAT IT OUT for sweatbands constitutes counterfeiting and is likely to confuse or deceive consumers into believing that Oakley’s sweatbands originate with or are sponsored by Lontex in violation of the Lanham Act (Trademark Act). Lontex also alleges that Oakey’s misuse of the mark SWEAT IT OUT constitutes willful trademark infringement. Thus, Lontex is requesting that the court award triple damages, costs and reasonable attorneys’ fees. This case underscores the need for brand owners to understand proper trademark selection.
Tips for Selecting a Trademark
There are many reasons why trademark owners should carefully select and clear new product names, trademarks and even product slogans and phrases. Some of which include selecting trademarks and slogans that are immediately eligible for trademark protection and do not infringe third party rights.
Even when brand owners select trademarks and/or slogans that would likely not infringe third party trademark rights, it may still be prudent, in some cases, to choose another mark. For example, it is not a good idea to select marks that would likely draw fire from a competitor that aggressively enforces its marks against uses of similar marks – even when consumer confusion is unlikely (we call those parties “Trademark Bullies”). Furthermore, selecting marks that would likley get “lost in the marketplace noise” with other similar trademarks is also not advisable.
There are instances when good business decisions (based on sound legal advice) are to simply consider different product names or slogans rather than spend hundreds of thousands of dollars (or more) defending a trademark dispute brought by an over-zealous plaintiff with a weak case. You might win the legal battle, but at what business and economic costs? Companies should also obviously steer clear of adopting infringing trademarks, product phrases and slogans and marks that would likely draw fire from a competitor for credible reasons.
Brand owners should instead spend their time and resources on brand development and growth and not on defending unnecessary trademark infringement allegations over the use of product slogans or phrases, not to mention the possibly of spending thousands or hundreds of thousands on re-branding (and, yes, I said the “R” word).
Not until trademark attorneys understand the gray of trademark law will they understand the gray of trademark law and recognize that selecting a different mark altogether is sometimes your best business option – even if that is not what you want to hear. From time to time I need to remind clients that they do not hire me so that I can tell them what they want to hear – but rather what they need to hear.
- As Robbie Robinson almost once said “You might hate me now, but you’ll learn to love me later.”
To read more about my views on trademark clearance and selection, read my blog posts here, here and here.