–Dan Kelly, Attorney
I should confess, if I haven’t already, that I do not watch much television. I’m not sure if T.V. viewing would have helped me to be more knowledgeable on what follows, but I was surprised on a recent road trip when my wife and I saw a semi trailer splashed with pictures of Taylor Swift and prominent displays of trademarks for L.e.i. jeans. The first question I put to my wife was, “Are L.e.i. jeans affiliated with Lee jeans?” My wife did not know, and I vowed to find out. (Also, not being Hawaiian, it did not occur to me immediately that “lei” as a stand-alone word is pronounced “lay” and identifies the garland of flowers so frequently associated with Hawaii.)
As it turns out, it appears that the LEE and L.E.I. brands not only have no affiliation, but the two coexist. Lee jeans have been around for a long time (the company tagline suggests “since 1889,” but the oldest claimed use of a registered LEE trademark by the H.D. Lee Company dates only to 1916). In contrast, it appears that the L.e.i. brand started in 1989. Despite being relatively active at the U.S. Trademark Trial and Appeal Board, I can find no record that the H.D. Lee Company ever challenged the L.e.i. marks. This surprises me, given that the two marks are only one letter off.
I am not certain what linguistic instinct made me think to pronounce “L.e.i.” as “lee,” but L.e.i. apparently advocates for the pronunciation “el-ee-aye,” articulating each letter separately. It also promotes the brand as an acronym standing for “Life-energy-intelligence.” Further, it is possible that the company that intrduced the L.E.I. brand secured the consent of the H.D. Lee Company prior to rolling out the brand. We may never know.
The lesson here, I think, is that even when your trademark attorney winces because a new mark is “only one letter off” of an existing mark, a closer analysis may counsel for coexistence.