Retailer accused of selling counterfeit sunglasses – Oakley v. Smash it Sports

A trademark is something that a manufacturer uses to brand their products in the marketplace. Trademark law is intended to protect consumers from inferior quality products. Trademark owners are granted the exclusive right to brand their products with a trademark to prevent consumers from being tricked into purchasing products manufactured by another company. When a trademark owner starts branding their products with a trademark they are granted the exclusive right to brand products with the trademark. If someone other than the trademark owner brands goods with a trademark, in a way that causes consumer confusion, that can be considered trademark infringement. A trademark owner can file a lawsuit to get monetary damages and to get an injunction to stop trademark infringement.

A trademark can be registered with the United States Patent and Trademark Office to strengthen the rights associated with the trademark but registration is not required to start using the trademark. One of the benefits of trademark registration is that registration gives constructive notice of the trademark owner’s claim of ownership. Constructive notice means that a defendant cannot escape trademark infringement liability by claiming the defendant didn’t know about the trademark owner’s claim to the trademark.

Trademarks rights extend through the supply chain. Manufacturers that brand products with someone else’s trademark without permission are just as liable for trademark infringement as the retailers that sell the infringing products. A retailer cannot use ignorance as defense to a trademark infringement lawsuit. If, in fact, if a trademark owner informs a retailer that the retailer is selling infringing products and the retailer does not listen to the trademark owner’s warning, the retailer can be accused of willfully infringing the trademark. Willful trademark infringement opens a defendant up to liability for enhanced damages, such as the plaintiff’s attorney’s fees, the plaintiff’s damages and the defendant’s profits. If a court finds that a defendant willfully infringed on a trademark the court may also award a judgement of up to three times the damages.

OAKLEY, INC. v. SMASH IT SPORTS INC., 6:18-cv-06594 (W.D. NY 2018) is a case which illustrates a retailer being accused of selling products which infringe on a manufacturer’s trademark. Oakley is an international manufacturer and retailer of high end eyewear and other products. Oakley has trademarked its name and many stylized versions of its O brand. The defendant is a regional retailer of athletic goods based in Rochester New York.

Oakley accuses Smash It Sports of selling counterfeit products which are branded with Oakley’s trademarks. Oakley has never authorized a sale of products to Smash It Sports and Oakley bought samples of products from the retailer to confirm that the products are counterfeit. Oakley alleges that Smash It Sports activities cause consumer confusion and lead consumers to believe that they are purchasing authentic Oakley merchandise.

Smash It Sports will be given an opportunity to respond to Oakley’s allegations, but it will have a difficult time arguing that is not liable for trademark infringement. The fact that Oakley purchased infringing products from Smash It Sports is strong evidence in favor of Oakley, and Smash It Sports cannot claim ignorance as a defense.

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