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.
Filed Under: dick fowles, kate ackerly, trademark
Companies: blair corp, peter-blair accessories
