Don't Be Confused

Submitted by patentadmin on Thu, 05/19/2011 - 13:55

Under some circumstances it is legally permissible for two different parties to employ the same trademark for different goods. Generally, this involves goods which are so disparate that ordinary consumers would not assume that they originated from a common source. The classic example of this is the use of CADILLAC as a trademark for both automobiles and dog food. Automobile manufacturers do not produce dog food and dog food producers do not manufacture automobiles. Hence, erroneous belief that there is a common source for both goods is unlikely. That is not to say, however, that the first user is always agreeable to use of the mark by the second party. (Sears Roebuck & Co. v. Rockhard Laboratories LLC.)

Sears is the owner of the trademark DIE HARD, federally registered in respect of a variety of goods, most notably, batteries. Rockhard – a name apparently selected by someone with a sense of humor – markets a “sexual enhancement spray,” more specifically, a “numbing agent for male genitalia,” under the mark of DIE HARD.

As anyone who has perused their famous catalogs can attest, Sears offers an extremely wide variety of goods, albeit nothing in the sexual enhancement line. In particular, nothing sold by Sears under the DIE HARD trademark – or any other trademark, for that matter – is intended for application to male genitalia. Nevertheless, the Sears folks, who possibly are unfamiliar with such products – and seemingly lack a sense of humor – have filed suit against Rockhard, alleging that “Defendants’ conduct is likely to cause confusion, mistake, and deception of the purchasing public insofar as purchasers would incorrectly be led to believe that Defendants are affiliated with, related to, sponsored by or connected with Plaintiffs…”

Personally, we think that the existence of such an “incorrect” belief is highly unlikely. Nevertheless, Sears is likely to prevail on the basis of sheer economic power.

Note: to dispel any lingering doubts, we wish to state that, despite the touted efficacy of DIE HARD spray, it cannot be used to start your car.

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