Another interesting trademark case was filed last Thursday in Minnesota federal district court, captioned Rolex Watch U.S.A., Inc. v. Associated Partnership Ltd., d/b/a Rollx Vans and d/b/a www.RollxVans.com. Here is a pdf of the Complaint and the attached Exhibit.

The crowned plaintiff really needs no introduction. On the other hand, the defendant Rollx Vans is not exactly new on the scene either.

It appears from the Rollx Vans website that the family owned business has been around about 40 years, providing the very necessary and socially valued service of re-building, selling, and servicing new and used wheelchair accessible vans. In addition, YouTube has some pretty compelling video promoting the Rollx Vans business, described as "The nation’s leader in wheelchair accessible transportation." Rolex admits in the Complaint that the Rollx name it is now objecting to has been in use since about 2001.

Domain Tools, however, reveals the use may reach back further, as the <RollxVans.com> domain was first registered back in 1996, and Archive.org further reveals an active web page dating back to at least as early as December 12, 1998, so it will be interesting to see how the Rollx Vans first use date really shakes out to know how long the coexistence in the marketplace has been with Rolex without apparent conflict. Can you say laches?

Either way, the watchmaker should have some explaining to do in bringing the action now. Rolex appears to claim it "first learned" of Rollx Vans after the USPTO approved this mark for publication in the Official Gazette, back in June 2009, so I’m left wondering what kinds of trademark watch services it had in place to monitor the use of trademarks in the marketplace.

More on this case later, but what are your thoughts in the meantime?

  • Tom Junnila

    First they are not in the same product categories, also I do not believe that Rollex can prove a revenue drop that corresponds to the increased sales of Rollx vans over the years. To me , with a bad global economy and the Walmart issue on gray market, Rollex management asked a broad question as to other possible legal issues they could use to explain away dips/downward trends in their sales. Also, the delay…when did they first become awareof this and I believe it is illegal to wait until they felt the alleged damages were now worth go after. Also when the USPTO reviews
    a name they do a search for possible conflicts and if they sense a problem.. the other party can object. Did this happen?