Epstein Drangel partner Kerry Brownlee explains the recent ruling in this high-profile infringement case handled by her firm
In March, in a protracted high-profile trademark dispute with Diesel Power Gear (DPG) in the United States, the internationally renowned lifestyle company Diesel was granted summary judgment in its favor.
DPG is a company formed by David Sparks, David Kiley and Josh Stuart, who are known for being on the Discovery television show Diesel Brothers. Perhaps best known for its denim and casual fashion, Diesel alleged trademark infringement, trademark dilution and federal unfair competition against DPG.
In granting Diesel’s summary judgment motion, US District Judge Mary Kay Vyskocil of the Southern District of New York found, among other things that: 1) there was a likelihood of confusion, as matter of law, between DPG’s use of Diesel Power Gear and Dieselsellerz on the one hand, and Diesel’s marks; and 2) that Diesel is a famous trademark, and DPG was liable for diluting that trademark. Judge Vyskocil also found that DPG’s actions were willful, as a matter of law, given that the undisputed record unequivocally showed that DPG acted with reckless disregard for Diesel’s rights.
Diesel filed a lawsuit in the Southern District of New York on October 8, 2019 to protect its rights, after several opposition proceedings before the US Trademark Trial and Appeal Board spanning a number of years, and after DPG continued to file for, and use, marks encompassing “Diesel” and other “Diesel”-formative marks, including Diesel Power Gear and Dieselsellerz, in connection with apparel and accessories. The complaint included representative examples of the alleged infringing apparel and accessories, such as t-shirts and hats sold by DPG on its website and/or storefront in Utah. For example, one style featured in the complaint is a white t-shirt emblazoned with “DIESEL AF” in white lettering in a red rectangle, which is clearly reminiscent of Diesel’s well-known trademark consisting of “DIESEL” in white lettering in a red rectangle. Yet, these examples are only a fraction of the hundreds of products that DPG sells that Diesel asserted are clearly objectionable and infringing.
Diesel is now seeking a court order enjoining DPG’s use of “DIESEL” and other “DIESEL”-formative marks on or in connection with the sale of apparel and accessories, which has continued to date, even after the court’s recent summary judgment order. The case will then proceed to the damages phase, in which Diesel intends to seek a damages award that compensates it for the substantial and continuous harm that DPG has caused to it and in the marketplace.
Kerry B. Brownlee is an Epstein Drangel partner and member of its anti-counterfeiting and litigation group, where she focuses on varied facets of intellectual property, including issues relating to trademarks, trade dress, copyrights, false advertising, unfair competition, design patents, and licensing. She can be reached at email@example.com.