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Not the Sharpest Knives in the Drawer?

Consumer Blog Report

That's what consumers may be saying lately about the domestic goddess Martha Stewart, renowned chef Emeril Lagasse, and television retailer Home Shopping Network (HSN). The trio is the object of a lawsuit filed by a German trade association, "Wuppertal-Solingen-Remscheid" in US District Court for the Southern District of Florida. The Chamber claims that Martha, Emeril, and HSN have engaged in trademark counterfeiting and unfair competition by advertising, promoting and selling counterfeit knives displaying the Chamber's federally registered mark, Solingen®.

According to the complaint, the SOLINGEN® mark was first used approximately 150 years ago. SOLINGEN® is a registered mark in the United States, which certifies not only geographic origin of the cutlery for which it is used, but also that the cutlery comports with statutory standards of high quality manufacture. To put a "finer point" on it, SOLINGEN® knives are even protected by the "Solingen Decree", a German law prohibiting anyone selling cutlery not made in Solingen, Germany, but implying that it is.

"Cutting to the quick", the Complaint alleges that Defendants distribute counterfeit cutlery marked "SOLINGEN" that is made in China, and that they even overtly say so. Picture this: The Chamber has claimed not only that the Defendants have created a likelihood of consumer confusion as to the source of their knives, but that they also cause dilute the Chamber's rights by "tarnishment." The Complaint cites examples of consumers stating that the knives at issue are rusting or breaking in half. The public, it appears, is particularly disappointed in the famous chef Emeril, known for his exclamation "BAM!" while cooking on his show. Martha comes in for her share of blame, according to the Complaint, for claiming that her knives truly hail from Solingen, and making a video stating that she has "been using these knives forever."

Trademark counterfeiting, if proved, can be a "dicey" proposition for a defendant, because statutory damages may be available. In this case, the Chamber is seeking treble damages or, alternatively, up to $2 million for each time Defendants have willfully counterfeited and infringed the SOLINGEN® mark. So, any way you slice it, trademark counterfeiting, if shown, can be a costly mistake for the defendant.

© Arnold & Porter Kaye Scholer LLP 2012 All Rights Reserved. This blog post is intended to be a general summary of the law and does not constitute legal advice. You should consult with counsel to determine applicable legal requirements in a specific fact situation.

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