Finally bringing to close a legal tussle that had been ongoing since 2003, the U.S. Court of Appeals for the 2nd Circuit on Oct. 5, 2007, ended the appeal of Black Diamond Sportswear regarding the summary judgment awarded Black Diamond Equipment on Aug. 25, 2005, by the U.S. District Court, Vermont.
The summary judgment now gives Black Diamond Equipment, according to its CEO Peter Metcalf, “uncontested rights to the Black Diamond name in the United States in category 25 – clothing.”
“In addition, we have also been granted official rights to the Black Diamond logo for clothing by the U.S. Trademark office. So yes, it is a very happy victory,” Metcalf told SNEWS®.
Black Diamond Sportswear, according to court documents, had been seeking $18 million in damages from Black Diamond Equipment for trademark infringement, false designation of origin, dilution under federal common law, and the Lanham Act. The summary judgment held that Black Diamond Sportswear’s claims were barred by the “doctrine of latches” which is legal parlance for statute of limitations. According to Black Diamond Equipment’s Director of Legal Affairs, Rick Luskin, “In Vermont, the limitation for filing a trademark infringement case is six years and starts to run from when you know the person is using the mark or should have known with reasonable diligence.”
According to Luskin, since both Black Diamond Equipment and Black Diamond Sports had been showing products at the same trade shows for 15 years, listed as exhibitors next to each other in trade show guides, and Black Diamond Equipment had produced thousands of catalogs, it became impossible for Black Diamond Sportswear to show it did not know Black Diamond Equipment was using the mark.
Black Diamond Equipment is now moving forward by filing a trademark case with the U.S. Patent and Trademark office to have Black Diamond Sportswear’s rights to the Black Diamond name restricted to what Black Diamond Sports argued in its claim against Black Diamond Equipment — rights and use of the mark are limited to fleece garments.
SNEWS® View: It is important for every company that owns a registered trademark to know that the system is set up as a self-policing one. Even though Black Diamond Sportswear filed for the Black Diamond trademark shortly before Black Diamond Equipment, both companies had been in business together for some time, and Black Diamond Equipment had a well-established record of making skiwear and other clothing. However, from 1990 through early 2000, Black Diamond Sportswear did nothing to defend its mark, even though during that time, Black Diamond Equipment was also manufacturing clothing. The moral of this story is you have to police a trademark if you own one, because if you do not, you will lose all rights to that mark. The reasoning behind this is simple. It prevents a company from establishing a mark, and then sitting back for decades while another company does all the legwork to brand the name, and then go to court to ask for all profits simply because you had a prior registration.
And, as much as we hate to see a cease-and-desist letter filed regarding alleged trademark infringement, more often than not we have learned, they are created to establish a pattern of enforcing and protecting the mark, not necessarily to seek damages from every party in every instance. In other words, defend it or lose it.