Dyson sues copycats for trademark counterfeiting. DYSON TECHNOLOGY v. VARIOUS DEFENDANTS

A trademark is a word, phrase, symbol, or design that identifies and distinguishes the products produced by one company from the products produced by other companies. Trademark law in the United States is focused on consumer protection. To ensure that consumers are not confused about who produced a product, trademark owners are given the exclusive right to brand products with their trademark. If someone other than the trademark owner brands similar products in a way that is likely to cause consumer confusion that can be considered trademark infringement. A trademark owner can file a lawsuit for an injunction to stop trademark infringement as well as for money damages for trademark infringement which has occurred.

Registration of a trademark is not necessary to begin using a trademark in the United States or to granted some rights to a trademark. However, because registration of a trademark strengthens the rights associated with the trademark, many trademark owners choose to register their trademarks. In the United States applications to register a trademark are reviewed by the United States Patent and Trademark Office. When the United States Patent and Trademark Office reviews an application to register a trademark, the office will first determine if there is a likelihood of confusion between trademark in the application and existing registered trademarks. If the United States Patent and Trademark Office does not find a likelihood of confusion, the trademark application will be published for opposition.

After a trademark is registered, a trademark owner has access to several options which are not available to unregistered trademarks. One of those options is 15 U.S.C. §1114. That statute states Any person who shall, without the consent of the registrant … (b) reproduce, counterfeit, copy, or colorably imitate a registered mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive, shall be liable in a civil action by the registrant for the remedies hereinafter provided.

A case which illustrates a trademark owner using 15 U.S.C. §1114 to combat trademark counterfeiting is DYSON TECHNOLOGY LTD, v. THE PARTNERSHIPS AND UNINCORPORATED ASSOCIATIONS IDENTIFIED ON SCHEDULE A, 1:20-cv-05719 (N.D.IL 2020).

Plaintiff in this case is a is manufacturer of consumers products, most notably high end vacuum cleaners. Plaintiff also produces a line of hair care devices, such as hair dryers or curling irons, that bear the trademark DYSON, AIRWRAP, or SUPERSONIC. These trademarks are registered to Plaintiff.

Defendants are a group of unknown companies that may of may not be related. Defendants operate online stores which prominently display Plaintiff’s trademark and offer products for sale which bear the Plaintiff’s trademark. The stores are intended to lead consumers to believe that Defendants are authorized resellers of Plaintiff’s products. The products sold on Defendant’s sites are actually counterfeits of Plaintiff’s products. Common elements of the online stores and the products sold on the stores would lead the casual observer to believe that the online stores are related.

Plaintiff filed suit claiming Trademark Infringement under 15 U.S.C. §1114, Trademark Counterfeiting under 15 U.S.C. §1114, False Designation of Origin under 15 U.S.C. §1125(A), and Violation of Illinois Uniform Deceptive Trademark Practices Act. Defendants were named as a group, rather than filing individual lawsuits against each Defendant operating an online store. This strategy is much more cost effective than attempting to go after each counterfeiter individually. The list of companies named as defendants is under seal so the exact number of defendants is unknown.

Defendants have not answered the complaint yet. However, the one clear lesson from this case is registering a trademark gives a Plaintiff options they would not otherwise have.

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