Can anyone legally own blue and white checks?

An upscale mattress company thinks it can, but it may have chosen the wrong Texas family to find out.

The owners of the furniture and design store Coco & Dash on North Henderson Avenue in Dallas say that they will not back down after receiving an order from Hästens, the luxury mattress manufacturer based in Sweden.

Hästens, who wraps his mattresses in blue and white checkered ticks, believes that Coco & Dash is violating its brand by laying blue and white checkered fabric on a sofa.

Coco & Dash is asking a federal court in Dallas to overturn the Horse’s trademarks.

“I’ll lose my store before I stop selling blue and white checks,” said Teddie Garrigan, 72, who owns Coco & Dash with his daughter, Courtney Garrigan, 48. preferably, is crazy. Checks have been around for centuries. “

That is certainly true, but somehow Hästens has received several trademarks from the US Patent and Trademark Office.

Hästens started applying for trademarks and copyrights at the end of December 2016 but has used the blue-white checkered fabric since 1978. A registered trademark says that the words “blue check” must always contain their company name: “Hästens Blue Check”.

Additional marks – 11 in total – were registered for a wordless illustration and for marks consisting of a “repeating pattern of four adjacent squares”, “squares which are completely or partially shaded” and other long ways of saying checks.

This probably means that Wayfair, Pottery Barn, all furniture and home furnishings, bed and bath stores in America and every textile and furniture manufacturer violate Hästens’ brands for checkered “furniture, mattresses, pillows and other textiles such as duvets, blankets and garments. ” Another brand is for “clothes, namely nightgowns, bathrobes, headgear, namely nightgowns, sleeping masks.” And there is a separate for the canopy and bedroom curtains.

The horse’s document never spells furniture to include sofas and chairs, but a Google search for either blue and white boxes provides endless choices.

A case study

Kandace Walter, head of the Small Business and Trademark Clinic at Southern Methodist University’s Dedman School of Law, called the marks granted “ridiculous” and she looks forward to presenting the case to her class for discussion.

“I do not see how they got a mark for a check,” Walter said. “I’ve never seen anything like it.”

Norwalk Furniture chairwoman Caroline Hipple, who sits on the board of the American Home Furnishings Alliance, said the industry is “appalled by this situation. When will it end? Dots, stripes, paisley?”

Trademarks are easier to obtain than copyright. Autumn’s Boston-based law firm, Nixon Peabody, has also twice applied for copyright on checks. The US Copyright Office of the Review Board rejected Hästens both times.

The government’s lawyers were a bit playful in their rejection letter dated October 2018 and said “The work is falling straight into the Swedish Copyright Agency’s regulations that block the registration of a simple combination of basic geometric shapes and pure color variations. ”

And the Board of Auditors closed the book on a third application, saying that its decision “constitutes a final action by the Agency in this matter.”

Protects their brand

But that has not stopped Hästens, whose brand name means “hästens” in Swedish, from trying to strengthen its brand. The company started using ponytail hair in mattresses in the 1850s and still does. Its king-size mattress prices start at $ 13,980 for the Hastens Excel model and top at $ 506,990 for the Grand Vividus model.

A trademark must be enforceable in order to be valid over time.

Like the Nike Swoosh, a brand must make an identifiable impression on the minds of consumers, Walters said, and once you have a registered trademark, you must proactively protect it.

Hästens does not seem to succeed in maintaining its check marks because the pattern is everywhere and has been since colonial times in America. Some check designs can be traced back to ancient Egypt.

David May, Hästens’ attorney in Washington, DC, Nixon Peabody’s office, did not respond to a request for an interview.

In his letter to Coco & Dash, May said that the store’s use of “Hästens Check Design is unauthorized and is likely to create confusion in the market about the source of the goods.”

Teddie Garrigan thinks that statement is particularly comical and says that her business is hardly a worldwide brand. But Coco & Dash, founded in 2014, is one of Dallas’ ambitious furniture and design stores that gives the city a reputation for luxurious living and elegant real estate. It was just named the best retailer in the Midwest and Southwest in the ART Awards, a peer-to-peer award program for the home accent industry.

“We’re a parent company. We say they think we’re a big competitor,” says Teddie Garrigan. “We are Texas girls, and we will go head to head with them.”

The horse’s letter to Coco & Dash referred to the Trademark Act’s Lanham Act, which provides awards of up to $ 2 million per item sold. Coco & Dash blue-white checkered sofa costs $ 13,500.

The discontinuation letter demanded that Coco & Dash not only stop selling check designs, but also ask the Dallas retailer to provide “a complete and detailed account of all products that Coco & Dash has sold with Hästens Check Designs or designs that are confusingly similar,” plus those that it has in stock.

Garrigans did not.

Instead, worried that Hästens would sue in a court in Washington, DC or New York, with travel expenses surcharges, they filed a complaint for declaratory judgment and relief to the U.S. District Court for the Northern District of Texas in Dallas.

The store’s attorney is Teddy’s husband, Dan Garrigan.

The application must be delivered to Hӓsten’s head office in Köping, Sweden, at a significant cost, said Dan Garrigan. “It’s about thousands.”

The Garrigans ask the court to order the cancellation of each of Hӓsten’s registered trademarks at the US Patent and Trademark Office

So far, Hästens’ lawyer May has not responded to a copy of the complaint that he should have received on 3 January.

Garrigan, a former prosecutor now in private practice, said he is not an intellectual property expert, but the order to stop and waive “simply did not make sense.”

He calls it “brand bullying” and said that even if the family “did not choose this fight”, the garrigans want other small businesses that do not have the resources to fight back to be able to use whatever fabric they are entitled to.

And anyone who knows Teddie Garrigan, he said, “knows she’s not much for backing down. I do not see that happening here. I think Hästens will find that they chose the wrong two women.”

The family is joking now when they see a checkered tablecloth in a restaurant and say to each other, “Oh, they are toast.”

Twitter: @MariaHalkias

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