Rolls-Royce sues cookware company for using its name in advertisements
UK-based Rolls-Royce has filed an intriguing lawsuit in a United States federal district court alleging that a cookware company is infringing on its well-known trademarks and causing its dilution.
The luxury automaker claims that One Source to Market, LLC d/b/a HexClad ("HexClad") is deliberately violating its trademark rights in the well-known and federally registered ROLLS-ROYCE word mark and ROLLS-ROYCE logo by manufacturing and selling cookware that is referred to as "the Rolls Royce of pans."
Rolls-Royce claims that HexClad is allegedly causing “ongoing and irreparable harm" by making the tagline the focal point of their marketing materials.
Rolls-Royce claims to have manufactured, sold and provided maintenance on luxury vehicles bearing the ROLLS-ROYCE brand since 1906. The company also asserts that it uses the same trademarks on a range of consumer goods, including food and drink items.
Rolls-Royce claims that it has developed strong trademark rights in its marks as a result of its "long, continuous, and exclusive use of the ROLLS-ROYCE marks, substantial investments in promotion and advertising under those marks, significant revenues earned from ROLLS-ROYCE products and services, and the substantial media attention and publicity" that it has attracted. In fact, Rolls-Royce asserts that its trademarks have enjoyed decades-long fame in the United States.
The company used two court rulings to back up its claim: one from 2016 against Davis Records for selling music under the alias "Rolls Royce Rizzy," and another from 1985 between Sykes Lab., Inc. and Kalvin, a case that did not involve Rolls Royce but where the judge nonetheless acknowledged "the fame of the ROLLS-ROYCE mark", noting that “the dilution doctrine is only available to protect distinctive marks exemplified by such famous names as ‘Tiffany,’ ‘Polaroid,’ ‘Rolls Royce’ and ‘Kodak.’”
Rolls-Royce claims that HexClad manufactures, advertises, and sells pots, pans, cookware, and other kitchen equipment, and uses celebrity chef Gordon Ramsey to promote those products.
It asserts that in advertising, promoting, and selling its products, HexClad has adopted and utilizes the slogan/tagline "The Rolls-Royce of Pans," which appears on the company's website, social media platforms, Google ads, and in-store displays at Costco.
In fact, according to the company, HexClad "features the ROLLS-ROYCE trademark more prominently than its own HexClad trademarks" in its marketing materials, despite the fact that the business "promptly objected" to its use of the tagline.
As a result, Rolls-Royce asserts claims of trademark infringement, trademark dilution, and unfair competition, and seeks monetary damages and injunctive relief to prevent HexClad from using, exhibiting, and/or registering the Rolls-Royce marks "in any form (online or offline)."
Although HexClad has neither commented on the suit nor filed its defense, legal observers opine that they will likely argue that there is little confusion in consumers’ mind between luxury automobiles and cookware, and hence no confusion as to the source origin of the goods in question.
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