Sears Wacks 13 Year Old WEEDWACKER Infringers

Posted by | January 20, 2012 | Disputes, General | 4 Comments

 

I often find myself writing about lawyers getting in the way.  This case is a great example of just that!

According to an article on CBS Sacramento, “[t]here is a David and Goliath battle going on in Nevada County where two entrepreneurial teens are under attack from a nationally known department store.”  Indeed there is.  The question is . . . should there be.  I’ll go out on a limb here and say the answer is both yes and no.

You see, last summer 13 year old twins James and Andrew Schnitzius started a lawn care business to earn the money they need to buy the iPod touch’s they want.  So far, so good.  An uncle helped them come up with the name Weed Whackers R US, for which he made the website shown above, presently found at <weed-whackers-r-us.com (though with a note stating that the site will be taken down on 01/27/2012).  See where this is going?

I see two things wrong with this picture: 1. Use of WEED WHACKERS as a service mark for a lawn care business when Sears owns a federally registered, well known trademark for WEEDWACKER for weed and grass trimmers (machines, not people); and 2. Use of “R Us” when there is a highly litigious giraffe out there who won’t knowingly let anyone use “R US” for anything.  I think Sears has a point, while I’m not so sure that Geoffrey, Inc. would, which doesn’t matter since only Sears sent a C&D letter to the domain name registrant (a gentleman named Brandon Bagley from Gilbert, Arizona, whom I presume to be the boy’s uncle).  That said, how the point is made is just as important as whether there’s a point to be made in the first place.

Sears’ C&D letter states in not-so-friendly terms:

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Your unauthorized use of Sears’ WEEDWACKER mark in association with the Infringing Domain and Infringing Website constitutes a violation of Sears’ rights under the Federal Lanham Act (Trademark Act), 15 U.S.C. §1051 et. seq. , the Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. §1125(d), and applicable state laws prohibiting trademark infringement and unfair competition, and potentially subjects you to a variety of remedies of damages and/or profits resulting from the unauthorized trademark use, and an award of statutory damages and attorney’s fees due to your willful acts of infringement and cybersquatting.

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As if that incredibly long sentence wasn’t threatening enough, the letter continues . . .

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Under 15 U.S.C. §1117(d), Sears is entitled to recover up to $100,000 in statutory damages per violation plus attorney’s fees as a result of your registration and use of the Infringing Domain.

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Yikes!  That’s the best Sears could do with this set of facts?!?  While Sears certainly has the right to prevent trademark infringement and cybersquatting, including these kids and their uncle running a lawn care business using the WEEDWACKER or WEED WHACKERS mark, I wonder if a heavy handed C&D letter was the best way to ask them to stop.

How you say something is just as important as what you say.  Was a formal C&D letter the right way to commence negotiations with two teenage boys supplementing their allowance?  What do you think?

 

About Lara

Lara Pearson is a trademark attorney with Exemplar, where she also serves as the firm's Sustainability Steward. Lara's legal practice focuses on trademark and copyright law, including: intellectual property audits; trademark search & clearance; trademark and copyright registration & maintenance; intellectual property transfers; transactional work; and dispute resolution, including litigation when necessary. Lara primarily represents other social enterprises -- those leveraging their businesses and brands as catalysts for positive social and environmental change. Such businesses engage in CSR (Corporate Social Responsibility) to have a positive "triple bottom line" of people, planet and profit. As Exemplar's Sustainability Steward, Lara works with others in her law firm to measure and reduce the firm's carbon emissions and encourage engagement in social responsibility initiatives, including pro bono legal work and volunteering. Lara is a proud member of the Social Venture Network. Brand Geek is a member of 1% for the Planet and a Certified B Corporation, whose Incline Village office is certified under the regional Keep the Sierra Green program. Exemplar Companies is the most innovative professional services firm in the New Economy. Our unique, diversified expertise spans the disciplines of corporate law, business advisory, and capital/investment banking to better meet the needs of our high-potential customers. We have assembled a comprehensive suite of service to meet the complex issues facing companies in today’s challenging business environment. Our unique, holistic approach ensures the growth and success – and greatly increases the competitive advantage - of our customers. The Exemplar team is comprised of knowledgeable, highly skilled experts in a wide range of industries and disciplines. They work closely with our customers to provide trusted advice, incomparable support, expert guidance and the ultimate competitive advantage as they accelerate their businesses and position themselves to transform industries.

4 Comments

  • Weed Wacker says:

    Weed wackers are a very handy and yet useful device used to cut through unwanted weeds and shrubs overgrowing on lawns. It is not just used to kill weeds it is also used to edge the grass along the different edges you might have in your yard. It is also referred to as the weed eater or string trimmer. It is much easier and faster to use than manually doing the trimming with the use of garden scissors, especially when maintain extensive terrains.

  • Linda W says:

    This reminds me of a 6 year old boy back in 1960 that went out in his yard and dug up some angle worms to sell to fishermen. He was selling them for a nickel and made a whole 75 cents. The IRS found out about it and went after him for income tax … they said the little boy owed them 3 cents, that’s right 3 cents!!! The IRS spent over $2500.00 going after a 6 year old for 3 cents! Finally someone with a brain ordered them to stop it, needless to say they were a laughing stock! The little boy decided to retire!!!

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