Between a larger company and a smaller company, if you were asked to predict who would be more careful about their trademark application – who would you pick? You might expect that a larger company would have greater access to legal resources, and would therefore have a firmer grasp on intellectual property law. From that, you might think they would thoroughly vet similar marks by conducting a comprehensive trademark clearance search before filing a trademark application. However, sometimes the larger size of a company means they are more willing to take risks rather than being risk-averse in their trademark choices.
We see this in a recent conflict between Calia, a Dick’s Sporting Goods subsidiary, and smaller athletic clothing maker Wooter.
The Infinity Logo
In October of this year, Wooter filed a complaint in the Eastern District of New York against Dick’s Sporting Goods, Inc. d/b/a Calia and American Sports Licensing, LLC. Central to the complaint is the logo for Calia, a women’s athletic clothing subset of Dick’s Sporting Goods (think yoga leggings and light golf-wear). Calia has been selling its clothes with an infinity symbol next to its name, and that symbol has become a sticking point for Wooter, another athletic apparel brand.
Why? Because Wooter also uses an infinity symbol logo.
To get straight to the issue, we will examine the logos next to each other:
If you were to see these logos on separate pieces of athletic clothing, would you assume that they were the same company or a different company?
If you answered “same company,” you would not be alone. Wooter found itself contending with customers who thought that Calia products were theirs. And it makes sense, because it is reasonable to assume that one company would simply have different clothing lines with a slight variation on the logos – perhaps the heavier lines in the actual Wooter logo denote the heavier competition of its professional uniforms, and the lighter infinity logo denote a clothing line for sport hobbyists.
While Wooter does focus more on the competitive and wholesale team uniform space, and Calia is pretty firmly “athleisure,” they still both operate in the realm of athletic wear.
Wooter employs its logo frequently and prominently on its site and on its clothing, so they have built up enough of a reputation to garner these assumptions. When they started to field actual consumer confusion, Wooter sent a cease-and-desist letter to Calia in August 2023. When Calia continued to use the logo, they filed the complaint, suing both for an injunction of the mark’s usage and for recovery damages from the infringement.
Calia Continues to Use an Abandoned Mark
One factor to note in this trademark complaint: Calia abandoned its trademark application for the lighter-lined infinity symbol in February 2023. Originally, Calia was a collaboration between Carrie Underwood and Dick’s Sporting Goods – one of those “celebrity-endorsed” brands. While we do not know exactly what the reasoning was for the abandonment of the trademark application, we do know that Underwood left the brand shortly before its abandonment.
However, Calia continued to use the logo in spite of the fact that they did not own a registered trademark for it. Was this intentional or an oversight? It is hard to say without knowing the inner workings of the brand as it reorganized post-Underwood departure. And, unfortunately, their intentions do not matter once a registered owner asks you to stop using their mark.
Is Wooter in the Right?
Wooter filed its trademark application for its thicker infinity symbol in 2017, and the official registration was confirmed in 2021. So they are well ahead of Calia. And they are following the correct procedures. The onus of protecting a trademark from infringers is on the owner of the trademark. They warned Calia that they were infringing – and when the infringement continued, they brought the issue to court as warned.
Why Would Dick’s Sporting Goods Risk This?
This is the big question in this case. Yes, Dick’s Sporting Goods/Calia might have won some sales by trading on Wooter’s consumer goodwill, but would that really be worth it to them?
Again, we are lacking insight from Dick’s Sporting Goods directly. But Wooter’s attorney did hazard a guess: he thinks they are playing the “larger company” card – in other words, they knowingly infringed because they have the resources to outlast a legal fight against a smaller company.
So, even though they are too late to claim the infinity symbol in this classification of goods, perhaps they are hoping to wear Wooter down in court in order to reach an agreement over the coveted mark.
Even if your company is large enough to try such a strategy, I do not recommend infringing on another company’s trademark. Dick’s Sporting Goods may be underestimating the fairness of the courts in responding to complaints like this. Wooter has a strong case regarding ownership and consumer confusion. Wooter’s trademark registration means that Wooter’s has the presumptive exclusive right to use the mark plus priority in commerce over Dick’s Sporting Goods. In addition, Wooters can demonstrate actual consumer confusion in commerce. It is a far better use of your resources to conduct a thorough trademark search and choose an original and distinctive mark for your company from the start.