A Deli-cious Case to Watch: Rolex Sues Rolex Deli
The luxury Swiss watch maker, Rolex, filed suit in federal court against Shawqu Ali, the owner of the Rolex Deli, for trademark infringement. The small deli located in Brooklyn has only been in operation for a little over four months, and according to an interview he gave the New York Post, Mr. Ali doesn’t understand why Rolex would be upset with him.
Consumer confusion is the linchpin of a trademark infringement claim, and Rolex alleges that the public will mistakenly believe the deli is sponsored by or affiliated with the watch maker due to their similar names. Since watch makers seldom lend their names to restaurants, this claim seems implausible. Certainly, Mr. Ali doesn’t believe that his patrons will associate his sandwiches with the Swiss watch maker’s goods since “There’s nothing Rolex-related on the menu.”
While Rolex’s confusion argument might be hard to stomach, owners of famous trademarks have another tool in their arsenal: the theory of trademark dilution. Dilution may be found if the deli’s use dilutes the “distinctive quality” of the famous mark, for example by “blurring” its association with a single source, or “tarnishment” of the reputation of the famous brand — even if there is no consumer confusion at all. Both of these arguments are made in Rolex’s complaint.
In this case, Mr. Ali would have a tough time arguing that Rolex isn’t a famous brand. He is facing the possibility of an order to cease use of the name, but also the potential for monetary damages if the court concludes that he “willfully intended to trade on the recognition” of the Rolex mark. Some support for that argument might be found in his interview, where Mr. Ali confessed to naming his business “Rolex Deli” because “it’s a name that is associated with quality and prestige.” Oops.
Most companies manage to avoid choosing names too similar to makers of competing or related products. However, many are not aware of the special protection accorded to famous trademarks. Our trademark team assists clients in a wide range of industries in the selection and protection of company and product names, in the United States and internationally. Carr & Ferrell can help if your business is in a pickle — or if you want to avoid one.
This article reflects the author's personal views, which may differ from the views of other Carr & Ferrell LLP employees. Our blog articles are neither opinions of the Firm nor legal advice on which you should rely. Please review our disclaimer.
Dennis Chang is a Patent Attorney with Carr & Ferrell's Intellectual Property Practice Group. Mr. Chang holds a B.S. in Biology and a Master's Degree in Biomedical Engineering from the University of Texas at Arlington and received his JD from Chicago-Kent College of Law.
Jefferson Scher is partner in the Intellectual Property Group of Carr & Ferrell and Chair of the Trademark Practice Group. Mr. Scher specializes in intellectual property and cyberlaw counseling and dispute management, with an emphasis on the protection and enforcement of trademarks and copyrights.
by Aylin Demirci, Senior Counsel, Carr & Ferrell LLP
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