If you watched Super Bowl XLIV in 2010, you may have noticed a Hyundai commercial featuring a group of men playing basketball with a brown ball that appeared to be printed with the Louis Vuitton logo—or was it? Hyundai says it was a look-alike. That may be, says LVMH, the owner of Louis Vuitton, but the Paris-based luxury retailer has taken Hyundai to court, claiming it was a trademark violation.
Retailers, especially those specializing in high-end merchandise, have always expected to lose a percentage of their profits to counterfeiters, but it’s only recently that retailers have begun to crack down on just about any business that appears to undermine the authenticity of their brand, no matter how innocent the alleged perpetrator thinks their actions might have been. Hence, the March 1, 2010 filing of Louis Vuitton Malletier (LVM) v. Hyundai Motor America in US District Court, Southern District of New York in Manhattan.
The complaint filed by LVM asks for unspecified damages and an order that bars Hyundai from diluting its trademark, claiming that use of the look-alike logo “is likely to both dilute the distinctiveness and tarnish the reputation of the LVM marks.”
Burberry vs. TJ Maxx
LVM isn’t the only one using the court system to protect its brand. On March 3, 2010, just days after LVM filed its case against Hyundai, Burberry filed suit against TJ Maxx for trademark infringement (Burberry Ltd v. The TJX Companies Inc, US District Court, Southern District of New York, No. 10-01711), claiming that the giant off-price retailer and parent company of TJ Maxx, Marshalls, and HomeGoods was selling various counterfeit products such as jackets, picture frames, polo shirts, scarves, and luggage at their stores.
Burberry claims that by selling products in the look-alike tan, red, and blue plaid pattern that Burberry is famous for, TJX stores are trying to “to attract their target customer base and profit at Burberry’s expense.” In other words, steal Burberry’s business.
How to Protect Your Brand
While you may not be Louis Vuitton or Burberry, you may still have to protect your brand from brand dilution. So what does this mean for small business owners like you?
The single most important thing you can do to protect your brand or trademark, which is usually your business name and logo, is to register it with the United States Patent and Trademark Office (USPTO). While trademark registration is not required, having a registered trademark is the only way you can take legal action for trademark violations or infringements. Registering your trademark has also another equally important benefit: It helps protect you from unknowingly infringing on someone else’s trademark and being the target of a lawsuit yourself.
Need help registering your trademark? LegalZoom has everything you need to get started.