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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
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:
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.
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
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.
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
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