Whose Name Is It, Anyway?

Submitted by patentadmin on Thu, 01/26/2012 - 12:11

Jill and Burt Kohler opened a cosmetology school in Scottsdale, Arizona...and a whole can of worms along with it.

The Kohlers were sued for trademark infringement by the Kohler Company. Kohler (the company) is probably best known for their faucets, toilets, bathtubs and other plumbing-related items, but holds over 30 trademarks that also include spa and salon services, as well as "guitars, pianos, candy, candles and horse breeding and stud services."

Who knew?

Not the Kohlers (the couple), until Kohler (the company) sued them for $400,000 plus damages for infringing their trademark. Kohler Co. accused the Arizona Kohlers of "oppressive, fraudulent and malicious" conduct, "unjust enrichment," "unfair competition" and seeking "to trade on the goodwill created by Kohler in the KOHLER marks." Yikes!

Though Kohler Co.'s approach may seem a bit heavy-handed to use against a mom-and-pop beauty school, the company's 30 trademarks must be protected or they will weaken and become harder to enforce in future lawsuits.

And though some attorneys advised the Kohlers that they had a good case and a decent chance of prevailing against Kohler Co. and keeping their school's name, they knew they were up against a "deep-pocketed foe."

Luckily, the Kohlers' story has a happy ending. The Kohlers settled with the Kohler Co. fairly quickly, without any money changing hands, and Kohler Academy will now be known as the Penrose Academy.

And the Kohlers, whose business is currently outfitted entirely with Kohler plumbing fixtures, are considering a makeover of sorts.

"We're in talks with Toto and American Standard's reps," Jill Kohler says.

Lesson to be learned: There may be nothing as valuable as your good name, but that doesn't mean you can use it in your company or product name. Make sure no one else has trademarked it for your intended use.

Submitted by Anonymous (not verified) on Mon, 05/28/2012 - 14:43


I almost wish this one had gone to trial, because it kinda looks like Kohler may have overstepped its bounds here. Of all the tactics of intimidation out there, suing people to prevent them from using their own last name in their business seems pretty low to me.

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