Willful trademark infringement alleged after defendant admits infringement, promises to cease

Originating in Stillwater, Minnesota, the German-themed Hammer-Schlagen® nail driving competition is primarily identified by a three-dimensional trademark: a cross-section of a tree with nails positioned around its circumference and a cross-peen hammer. The decades old brand is owned by WRB Inc. of Minnesota and appears at hundreds of events nationwide.

“We’ve granted exclusive rights in the entire state of Washington for the Hammerschlagen® Tournament Of Champions,” says Jim Martin, WRB’s CEO, “It’s become quite popular since starting in 2005.” So when a competing event used the Hammer-Schlagen® trademark and trade dress and name in 2015, WRB became concerned and reached out. The competing event, Oktoberfest At The River in Spokane, responded promptly. Through its coordinator, Tom Stebbins of Vision Marketing LLC, the event promised to never again use the Hammer-Schlagen® family of trademarks and removed infringing content from multiple websites. WRB forgave the wrongdoings and even thanked the Stebbins’ group for yielding.

Unfortunately, the willful trademark infringement did not stop there according to WRB.

On December 13th, 2016, WRB filed a federal trademark lawsuit in the United States District Court for the Eastern District of Washington. The complaint alleges that Stebbins’ group deliberately violated its assurances by again using the Hammer-Schlagen® trademark and trade dress at their 2016 event. “They also associated a name other than Hammer-Schlagen® with our trade dress,” Martin says, “That’s like putting the Pepsi name on the Coke bottle.” WRB said evidence exists showing customers were actually misled into believing the Hammer-Schlagen® service was being offered. Damages are also sought for the unauthorized use of the Hammer-Schlagen® trade name.

According to the complaint, when the 2015 arose Stebbins gave written representations that they had indeed infringed on the trademarks and trade dress of WRB, that the trademarks and trade dress were valid and enforceable, that they would cease any further use of the trademarks or trade dress, and that they promised to pay costs and attorneys’ fees in addition to any remedies available under the law.

If those allegations in the complaint are proved to be true it would seem that Stebbins will have a very difficult time in this trademark litigation.

“We’ve done everything we can to prevent this,” says Martin, “but they’ve chosen to ignore our federal rights and force our hand. I’m not happy with the fact they’ve broken their promises and given us absolutely no other option. They decided to paint us into a corner, and it’s extremely disheartening. We just want them to stop.”

The complaint filed seeks preliminary and permanent injunctions, attorneys fees and cots, and treble damages to account for the willful and knowing use of the trademarks and trade dress, which the complaint characterizes as counterfeiting.

It is worth noting perhaps that the press release issued by WRB characterizes their trademark as “famous.” Famous trademarks can be protected under dilution, but it is extremely difficult for a trademark to attain “famous” status under the law. See Almost Famous. There is not a claim of dilution made in the WRB complaint. Claims made against Stebbins and Vission Marketing, LLC, include trademark infringement (15 U.S.C. 1114), false designation of origin (15 U.S.C. 1125(a)), trade dress infringement, and two state law claims brought under Washington State law.