Enforcing Your Trademarks: Harley-Davidson Does It Right

Enforcing Your Trademarks: Harley-Davidson Does It Right

One of the obligations of a trademark owner is to stop infringers from using his or her trademarks. Remember that the reason for a trademark is to distinguish the source of goods and services, so if rampant infringement makes it impossible for the consumer to distinguish the source of goods or services, then the trademark ceases to become a source identifier. Once a trademark loses its distinctiveness, the owner no longer has trademark rights.

Famous brands such as Tiffany, Nike, and Harley-Davidson invest millions of dollars a year to promote their brands, and are diligent about protecting them from infringers. Just recently, Harley-Davidson emerged victorious in a trademark dispute against print-on-demand firm Sunfrog.com. Sunfrog allows users to upload their own designs and have them printed on a variety of products, including coffee mugs, tee-shirts, hoodies, and mousepads. Some naughty users were uploading variations of Harley-Davidson’s logo designs, and selling tee-shirts and other items with the famous logo, all without the permission of Harley-Davidson.

The vast Harley-Davidson empire makes plenty on their clothing — reportedly, over nine figures a year — and none of the revenue generated on SunFrog.com was flowing to the company coffers. Not only did SunFrog allow its users to create and sell the infringing items, but SunFrog advertised the infringing goods on various social media websites.

When Harley-Davidson sued SunFrog for trademark infringement, and sought from the Federal District Court an injunction to prevent SunFrog from selling infringing goods, SunFrog lied, telling the court that they had already stopped any repeat infringers from selling items with the Harley-Davidson brand attached. In truth, the infringement continued, and SunFrog did nothing about the new infringers selling Harley-branded apparel on the SunFrog.com site.

Finding that SunFrog was apparently taking its sweet time dealing with the ongoing infringements, Federal Judge JP Stadtmueller permanently barred SunFrog from selling any more goods with the Harley-Davidson trademarks attached.

The judge also awarded Harley-Davidson $19.2 million in statutory damages for willful trademark infringement, sending a message to everyone in internet land that trademark infringement is serious business, and if you are stupid enough to copy a famous mark, you should expect to pay for it. This isn’t the end of the money damages, however; compensatory damage amounts have yet to be calculated. But expect SunFrog.com to be called upon to compensate Harley-Davidson for each tee-shirt that was sold on the SunFrog.com site, as those sales represent a tee-shirt that wasn’t purchased at an authorized Harley-Davidson retailer.

So the moral of the story is: Stay far, far away from famous marks, and when the owner of a famous mark asks you to remove infringing items from your website, for goodness’ sake, just do it! There is no way to prevail over a trademark owner, and you risk paying a ton of money in statutory damages for willful trademark infringement if you continue to ignore the owner’s requests to stop stealing their property.

Contact Dallas, Texas trademark attorney Angela Langlotz today to get started on a trademark application for your valuable brand.

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