One Company's Story Of The Soft Cost Of Aggressive Trademark Enforcement

from the cycle-of-abuse dept

When we talk about trademark disputes around here, we're often talking about them at the start of a bullying process or at the conclusion of a trial. Those are the natural checkpoints for covering these kinds of disputes, with either the initiation of the dispute, often times specious, or the conclusion when an outcome is reached, often times unfortunate. Less discussed but certainly as important are the softer outcomes of trademark bullying and disputes. And it's useful to highlight just what it can cost a small entity that is victimized by all of this.

Dick Fowles and Kate Ackerly opened a clothing store in 1993 called Peter-Blair Accessories, named after the duo's godchildren. Out of the blue in 2009, Fowles and Ackerly received a letter from Blair Corp., a discount retailer of accessories that primarily sells its goods online. Blair Corp. too sold ties and accessories on its website, though they were significantly different in terms of price and quality. The letter accused Peter-Blair Accessories of infringing Blair Corp. trademarks by selling its goods online. After a great deal of back and forth, Blair Corp. agreed to allow the smaller clothier to sell only its own branded ties online. Nothing else.

This went on for nearly a decade, coinciding with the exact time when online clothes shopping took off.

“It was probably a lot (of lost revenue),” Snyder said. “People were starting to buy on the web more and more. That whole chunk of our business was gone.”

“And people aren’t wearing ties like they used to,” Ackerly said. “We needed to branch out with the accessories company, but we couldn’t because of this infringement.”

Business was constricted due to the lack of online sales. The two went so far as to explore changing the business name to get around all of this with a creative branding company. While they eventually decided against the name change, that branding company introduced them in 2017 to a trademark attorney, Pike IP Law. That attorney found that many other retailers had attempted to get trademarks in the clothing business that included the term "Blair", with Blair Corp. opposing and forcing many to back off their applications. In some instances, however, the smaller retailers would push back and get some kind of settlement that allowed for a good chunk of goods to be sold online.

A strategy was formed.

“(Pike) said we should purposefully put extra items (to sell online) into the trademark that we weren’t interested in pursuing,” Snyder said. “So that if Blair wanted us to concede in some way, we’d have something to give up.”

After putting its application in, Blair Corp. immediately opposed, initially filing for two extensions to oppose Peter-Blair's application. After some back and forth, true to form, Blair Corp. settled, with Peter-Blair giving up the fluff in its application that it didn't really want anyway. With the opposition dropped, Peter-Blair Accessories got its trademark in August. While this was reason for celebration, nothing can make up for nearly a decade of lost revenue due to a threat letter over trademarks that Blair Corp. barely ended up enforcing anyway.

Sadly, this story doesn't have the happiest of endings. If you thought Fowles and Ackerly had taken the lesson from all of this to be the burden and dangers of jealous IP enforcement, think again. Missy Snyder, commenting below, is Peter-Blair's COO.

“(Dunlap and Pike) made us realize how damaging it was to not copyright some of our designs. There are companies that have copied (our designs), like Vineyard Vines, who’s much bigger than us. Bernie and Tricia have sent cease-and-desist letters on our behalf,” Snyder said.

C'est la vie.


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  • icon
    Anonymous Anonymous Coward (profile), 22 Oct 2018 @ 6:08pm

    Double Standards

    The copyright conundrum has confused me yet again. If in all other works a copyright is imposed upon creation and one entity produces a work which is then copied, then how can the copier be the one to make the claim that the originator copied the copier? Cannot the originator provide some dated evidence of their prior art?

    Is this a situation where in the fashion industry a copyright must be registered, as apposed to other forms of copyright?

    reply to this | link to this | view in chronology ]

    • icon
      Gary (profile), 22 Oct 2018 @ 7:56pm

      Re: Double Standards

      Is this a situation where in the fashion industry a copyright must be registered, as apposed to other forms of copyright?

      Up until recently the fashion industry was almost completely copyright free. Companies needed to innovate. That changed when someone figured out how to claim design elements that were somehow separate from the clothing...

      reply to this | link to this | view in chronology ]

      • identicon
        Anonymous Coward, 23 Oct 2018 @ 11:12am

        Re: Re: Double Standards

        The pants we make have a zipper, your pants with a zipper are infringing, now pay me lots of money.

        reply to this | link to this | view in chronology ]

    • identicon
      Anonymous Coward, 22 Oct 2018 @ 8:34pm

      Re: Double Standards

      I'm assuming you are referring to the phrase "how damaging it was not to copyright our designs"? It seems fairly clear from the context that this is simply someone who doesn't understand copyright very well talking about their previous "lack of copyright enforcement" as a "lack of copyright".

      Otherwise, everything is fairly standard chronological order, nothing weird about it.

      reply to this | link to this | view in chronology ]

      • icon
        Anonymous Anonymous Coward (profile), 22 Oct 2018 @ 8:50pm

        Re: Re: Double Standards

        If copyright is automatic for fashion, as it is in every other case, then their documentation of their original design presentation gets them the win. The cost of suing the parties infringing might seem prohibitive, in both dollars and time. Even if they win in the sense of dollars.

        The other issue, trademark, where it doesn't appear that any logos that might cause confusion was involved, merely the name Blair, as in Peter-Blair Accessories vs Blair Corporation seems overly litigious as I cannot see any confusion between the two. Just a bully trying to 'protect' their name, even when there is no confusion likely.

        reply to this | link to this | view in chronology ]

        • identicon
          Anonymous Coward, 22 Oct 2018 @ 9:30pm

          Re: Re: Re: Double Standards

          then their documentation of their original design presentation gets them the win

          Only if the other design is ruled to be infringing, which can be especially difficult in fashion design copyrights since there are generally rather limited design choices which are actually used in practice. Unlike painting, for example, fashion (except at the very high levels) tends to be limited by socially acceptable/normal aesthetic sensibilities much more than other areas of copyright. Unlike painting, there aren't a limitless number of subjects that can be done in similar styles (e.g. river #1, #2, #3....infinity). And unlike sculpture, requirements that it be functional drastically limit shape and form.

          What this means in practice is that independent creation is much more prevalent, and infringement is much more difficult to prove. This problem is exacerbated for smaller companies, since lack of publicity and visibility makes it difficult to prove that other companies even know you exist, much less took a close enough look at your clothing to copy it.

          reply to this | link to this | view in chronology ]

    • identicon
      Anonymous Coward, 23 Oct 2018 @ 2:55am

      Re: Double Standards

      Cannot the originator provide some dated evidence of their prior art?

      What is acceptable, in the legal sense, dated evidence? That is how do you have you claimed backed up by a third party? A copyright or design registry is one way of achieving this, while a dated drawing that you own can be questioned as to the date it was actually created.

      reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 22 Oct 2018 @ 10:32pm

    Remember, kids, IP laws protect the little guy! /sarc

    reply to this | link to this | view in chronology ]

  • icon
    PaulT (profile), 23 Oct 2018 @ 12:43am

    “(Pike) said we should purposefully put extra items (to sell online) into the trademark that we weren’t interested in pursuing,” Snyder said. “So that if Blair wanted us to concede in some way, we’d have something to give up.”

    "After some back and forth, true to form, Blair Corp. settled, with Peter-Blair giving up the fluff in its application that it didn't really want anyway"

    Well, that says it all, doesn't it? The company apparently battled for a decade and the only sticking point was resolved by literally making shit up.

    Yet, there are still those among us who insist that these things are here to protect artists and entrepreneurs, rather than to line the pockets of lawyers...

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 23 Oct 2018 @ 10:58am

    Imagine the Batman Slap meme

    Copyright and Trademark are different!

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 23 Oct 2018 @ 11:13am

    Home cooking is killing the restaurant business.

    reply to this | link to this | view in chronology ]

  • icon
    tdlawyer (profile), 24 Oct 2018 @ 5:32am

    What exactly is the problem here?

    Sadly, this story doesn't have the happiest of endings. If you thought Fowles and Ackerly had taken the lesson from all of this to be the burden and dangers of jealous IP enforcement, think again. Missy Snyder, commenting below, is Peter-Blair's COO.

    > “(Dunlap and Pike) made us realize how damaging it was to not copyright some of our designs. There are companies that have copied (our designs), like Vineyard Vines, who’s much bigger than us. Bernie and Tricia have sent cease-and-desist letters on our behalf,” Snyder said.

    What's the problem with a mom & pop shop suing other retailers for copyright infringement, assuming for the sake of argument that the other retailers actually did copy Peter-Blair's content? That's hardly trolling or "jealous IP enforcement."

    reply to this | link to this | view in chronology ]

    • icon
      PaulT (profile), 24 Oct 2018 @ 6:58am

      Re: What exactly is the problem here?

      The issue is that the wrong lesson was learned and that despite their experience they don't seem to understand how broken that system is (or, at least, don't care when they're the ones using it).

      There were other things to take away from the situation, "let's pay these guys more money because we're sure they're on the right team this time" wasn't really one of the most constructive.

      reply to this | link to this | view in chronology ]

      • icon
        tdlawyer (profile), 29 Oct 2018 @ 10:10am

        Re: Re: What exactly is the problem here?

        I don't follow the second part of your reply. Can you explain which guys you mean?

        On the first part, I'm trying to listen actively: do you mean to say that if Peter-Blair makes original content that they should (1) not care or (2) do nothing when others copy it and sell it for profit?

        reply to this | link to this | view in chronology ]

        • icon
          PaulT (profile), 30 Oct 2018 @ 2:49am

          Re: Re: Re: What exactly is the problem here?

          It's quite simple - the system is generally broken and the only people who win are the lawyers who get billable hours for pointless lawsuits. There are other ways to deal with genuine situations that don't involve instantly running to lawyers, and both sides are usually better for it.

          "do you mean to say that if Peter-Blair makes original content that they should (1) not care or (2) do nothing when others copy it and sell it for profit?"

          Not, just that they should realise that "pay the same lawyers who tried to sue us out of existence" is not the only, or even the best recourse.

          reply to this | link to this | view in chronology ]


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