Did you know the popular Stanley Travel Cup is tied to Stanley Black & Decker? A lawsuit is brewing over trademark rights and branding disputes. Is PMI overstepping, or is Stanley Black & Decker overreaching? Weintraub Tobin attorneys Scott Hervey and Tara Sattler discuss the legal battle over the iconic cup on this episode of The Briefing.
Watch this episode on the Weintraub YouTube channel here.
Show Notes:
Scott
Most people who have spent any time in a Home Depot, a Lowe's, or an Ace Hardware are well aware of Stanley Black & Decker Company. They're a manufacturer of a wide variety of tools and equipment. Well, did you know that the very popular Stanley Travel Cup is manufactured in connection with an agreement with Stanley Black & Decker? Well, I didn't know of this relationship. Well, it seems that that relationship is soured, and there's some trouble brewing in that Stanley insulated Stanley Black & Decker, which has filed a lawsuit against the Cupmaker Pacific Market International for trademark infringement and breach of contract. I'm Scott Herbie, a partner with the law firm of Weintraub Tobin, and I'm joined today by my partner, Tara Sattler. We're going to talk about this case and some issues related to Stanley Black & Decker's claims on this installment of the briefing. Tara, welcome back to the briefing.
Tara
Hi, Scott. Always great to be here.
Scott
Do you own a Stanley Cup?
Tara
I do. I have one sitting right here on my desk out of the screen.
Scott
I have one as well. Okay, so that's why I picked this case for us to talk about because I think everybody has a Stanley Cup. Let's set the stage here. Stanley, Black & Decker, let's just refer to them as Stanley. They were founded way back in 1843 and built a solid reputation over nearly two centuries. They have a family of trademarks associated with Stanley, many of which have become incontestable.
Tara
Now, Pacific Market International's predecessor, Aladdin Industries, started selling Stanley-branded insulated containers in 1913 when William Stanley Jr. Developed the revolutionary vacuum flask. The complaint alleges that beginning in 1966, Stanley and Aladdin entered into a series of agreements which sought to limit Aladdin's use of the Stanley trademark.
Scott
These agreements, at least as it's alleged in the complaint, restricted Aladdin and the company that bought Aladdin, Pacific Market International, we'll just call them PMI, their use of Stanley to specific goods. Fast forward to 2012, the parties entered into another agreement to address PMIs, then allegedly non-use of Stanley, which exceeded the scope of the previous agreement. This new agreement, according to the complaint, again further limited PMI's use of the mark to insulate food and beverage containers and placed requirements on how Aladdin and PMI could use the Stanley name in advertising and online.
Tara
Okay, so then what triggered Stanley to file a complaint?
Scott
Well, according to the complaint, PMI has been willfully and intentionally disregarding the 2012 agreement. Specifically, Stanley accused PMI of dropping PMI in its company name, that it changed its company name to just Stanley. Stanley also says PMI expanded its product offerings beyond food and beverage containers to include items such as apparel.
Tara
The 2012 Agreement expressly limits PMI's use of Stanley solely to use as a trademark to promote and sell insulated and non-insulated containers for food or beverages and carrying cases for transporting the same.
Scott
Right, that's what the complaint says. The complaint also accuses PMI of using the domain name www.stanley1913.com without prominently displaying PMI, and also failing to include PMI prominently in advertising materials and on products, including point-of-sale displays.
Tara
It sounds like Stanley Black & Decker is claiming PMI essentially tried to rebrand themselves as just Stanley in order to capitalize on the br...