–Cathy Dahl, Attorney

Vowels matter.  Or don’t matter in the case of World Marketing, Inc. v. Quiksilver, Inc. in the Central District of California.  World Marketing sent a cease and desist letter to Quiksilver based upon its rights in the mark VISITOR for men’s and women’s clothing and Quiksilver’s adoption and subsequent registration of the mark VSTR for use in connection with clothing (focused on surf apparel).  In response to that letter, Quiksilver filed a declaratory relief action.

World Marketing owns an incontestable federal registration for the mark VISITOR for men’s and women’s clothing, and the registration claims that the mark has been in use since at least as early as April 15, 1987.  Quiksilver filed three trademark applications for the mark VSTR, including one for which a registration issued, covering “shirts.”  The Quiksilver VSTR applications passed through examination without issue raised by the Examining Attorney.

Following a six-day jury trial, Quiksilver was found liable for unfair competition, and liable for federal and common law trademark infringement.  The jury awarded World Marketing $3.5 million for Quiksilver’s willful infringement of the VISITOR trademark.

So why doesn’t the lack of vowels matter or somehow make the marks distinguishable?  Well, presumably in part because Quiksilver announced in advertising for the brand that VSTR stands for “visiting, surfing, traveling and responsibility”, and is pronounced “visitor.”

Reading the details of this case made me think of the importance of conversations between businesses and trademark counsel about the potential use and advertising of marks.  While I don’t know the level of clearance the VSTR mark was given by counsel, I would think that World Marketing’s registration for VISITOR would have shown up in the clearance search if there had been at least some discussion between counsel and Quiksilver as to how the mark would be advertised and pronounced.  I’m not, however, sure that I understand the strategy behind filing a declaratory relief action upon receipt of a cease and desist letter though, particularly if the “pronounced visitor” advertising was already in play.

Being a good trademark lawyer means, in part, asking a lot of questions and asking for marketing materials to see how a mark is or will be used, and really understanding a product line or line of services.  By taking those pieces together with clearance search results, counsel should be in position to provide a client with an accurate assessment of risk.  Of course, a client may choose to take on a high level of risk.  That’s a business decision.  But I can’t help feeling like Quiksilver could have avoided this outcome.  A lack of communication and understanding seems to have cost them well over $3.5 million.