Is Old Navy Actively Pursuing Trademark Infringement? Skateboard/Snowboard Clothier Believes So

Active Sports Lifestyle USA, a manufacturer of active wear for extreme athletes/riders, recently filed a trademark infringement action against Old Navy. Old Navy is accused of infringing the "Active" trademark, which includes Active's triangle design. 

According to the complaint, Old Navy unsuccessfully filed trademark applications for stylized trademarks with the dominant portion of the marks being "Active" and displaying a trident/triangle design. The USPTO refused to register the marks based on a likelihood of confusion with Active's registered trademarks.

Old Navy Marches On

Old Navy continues to brand its products with marks that Active alleges as similar to its trademarks. According to the complaint, Old Navy offers several defenses for its continued actions:

  • the weakness of Active's marks;
  • Active and Old Navy target different customers; and
  • Active's marks are descriptive and have not acquired distinctiveness in the marketplace.

Old Navy also alleges that Active has signed away its right to enforce its mark by entering into a consent agreement with another trademark holder who coexisted with Active for more than a decade.  

David vs. Goliath

Active, which targets snowboarders and skateboarders, notes that Old Navy's advertising and in-store displays, some of which depict skateboards, suggest that Active and Old Navy's consumers and goods are in fact the same. Active goes on to describe Old Navy as "a corporate retail powerhouse" that willfully continues:

to infringe the ACTIVE Trademarks, with no intention of ceasing the infringing activity. Old Navy seeks to capitalize on the hard-earned good will of a comparatively small player who spent years developing its brand recognition, with no regard for Active's efforts or trademark rights.

Based on Old Navy's actions and statements leading up to this dispute, Active can only believe that Old Navy's actions are intentional. It has sought to delay its responses to Active while trying to quickly convince the USPTO to register its marks, all while having actual and constructive knowledge of the ACTIVE Trademarks.

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As a smaller, senior player in the marketplace, Active is not only a victim of infringement by way of likelihood of confusion, but may also suffer as a victim of "reverse confusion" through Old Navy's unauthorized and broad-based use of ACTIVE.

On April 3rd, Active filed oppositions before the USPTO's Trademark Trial and Appeal Board, opposing the Old Navy "Active" trademark as well as the trident/triangle design. These oppositions are currently pending. 

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