Trademark infringement suits, for our money, are one of the more entertaining corners of the litigation universe.
A common scenario in these cases is that a small business adopts a quirky knock-off of a bigger, more famous company’s brand, prompting cease-and-desist letters from the big-company’s lawyers and, on occasion, follow-up litigation.
Last fall, McDonald’s lost an eight-year battle to prevent a Kuala Lumpur restaurant from calling itself McCurry. The company behind Victoria’s Secret waged a 12-year court battle against the owners of “Victor’s Secret,” a lingerie shop in Elizabethtown, Kentucky that later changed its name to Cathy’s Little Secret.
The WSJ today looks at these disputes and others, including one we’ll call The South Butt v. The North Face, which involves Missouri college student Jimmy Winkelmann (pictured). About 3,500 trademark suits are filed each year in federal district courts. The problem, WSJ reports, is that many small businesses may not appreciate how far corporations will go to protect their brand.
Witness the aforesaid South Butt matter.
Winkelmann, according to WSJ, started a clothing company several years ago to mock fellow students who wore the outdoorsy The North Face brand, despite having no inclination to venture into the wilderness. He dubbed his company “The South Butt” and flipped The North Face’s half-dome logo to look like buttocks.
North Face sent a cease-and-desist letter and, when Winkelmann declined to cease, the company filed suit.
Winkelmann’s lawyer and a spokeswoman for The North Face said the matter was settled amicably, but declined to comment further.
Many small businesses, according to WSJ, find it’s not worth picking a battle with deep-pocketed companies, as legal costs alone can run $10,000 to $50,000, or several hundred thousand dollars if a matter goes to court. Most owners who find themselves on the receiving end of a cease-and-desist letter often settle the matter quickly to avoid the cost of a prolonged lawsuit.