If It Looks Like a Duck and Quacks Like a Duck, It Must be Trademark Infringement?

The case is a cautionary (duck?) tale about the importance of clearing trademarks prior to use and a reminder about the steps companies can take to minimize their liability under intellectual property laws.

Background

Since 2011, a Florida company called Hajn, LLC, has sold merchandise featuring the tag line MY FAVORITE COLOR’S CAMO. The company sells a variety of apparel items, as well as novelty items such as magnets and bumper stickers. The company also obtained a federal trademark registration for the mark and launched the website MyFavoriteColorsCamo.com. In its complaint, the company alleges that its online and retail sales have generated considerable interest and national visibility.

Sometime after Hajn obtained its federal trademark registration, however, A&E began selling Duck Dynasty merchandise that included a nearly identical tag line (“My favorite color is camo!”) based on a statement from cast member Si Robertson. Hajn claims that sales of the allegedly infringing merchandise have been extensive and notes that A&E generated more than $400 million in revenue from merchandise sales at Walmart in 2013 alone.

The Law Suit

In its complaint, Hajn charges A&E with willful trademark infringement and also asserts claims of federal and state unfair competition. Perhaps most problematic for A&E, Hajn claims that it sent A&E a cease and desist letter earlier this year, which the network’s lawyers confirmed receiving but never formally responded to. Meanwhile, A&E continued selling and advertising the “camo” merchandise. Hajn asserts that A&E’s use of the tagline has led to instances of consumer confusion, including so-called reverse actual confusion, in which consumers believe that the senior trademark user is selling goods related to or associated with the better-known junior user. Hajn is asking the Court to prevent A&E from selling the merchandise, as well as for damages and disgorgement of profits.