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

By Gene Quinn
December 27, 2016

Minnesota company alleges the trademark of its entertainment service was knowingly and willingly counterfeited by a Washington group.

Hammer-Schlagen® 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.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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