Pacific Market International (PMI), which makes Stanley tumblers, has been hit with yet another lawsuit related to its popular drinkware.
- The Stanley Quencher was arguably the hottest promotional product of 2023.
This time, Stanley Black & Decker has sued the company over the use of the “Stanley” name.
After “several waves of negative press” associated Stanley with lead poisoning and burn hazards, the toolmaker is accusing PMI of confusing consumers in the marketplace and damaging Stanley Black & Decker’s reputation in the process, according to the lawsuit.
- Last month, PMI was hit with a class action lawsuit accusing it of failing to properly compensate customers for a lid defect that resulted in the recall of 2.6 million mugs.
Furthermore, the toolmaker, which was founded in 1843, claims PMI has broken a nearly 60-year agreement with Stanley and PMI’s predecessor that limited use of the “Stanley” name to “insulated containers adapted to keep their contents hot or cold.”
- The Stanley brand reportedly dates to 1913, when William Stanley Jr. developed the vacuum flask.
Following PMI’s “repeated non-compliance” with the initial agreement, the parties signed a 2012 agreement signed requiring PMI to not only include its full corporate name with “Stanley,” but also not use “Stanley” as a “company name, division or proper noun,” according to the complaint.
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“PMI has willfully and intentionally ignored the carefully crafted restrictions of the parties’ agreement, choosing instead to use Stanley broadly, including in ways that the parties’ agreement expressly prohibited and that infringe on Stanley’s trademark rights,” the lawsuit states.
As a result, Stanley Black & Decker is asking the court for an order blocking PMI’s use of the “Stanley” name and an unspecified amount of monetary damages, Reuters reported.
PMI Responds
On Friday, PMI sent out a press release countering that the lawsuit seeks to stop it from using PMI’s own “incontestable” federally registered “Stanley” trademarks for its food and beverage containers – products over which Stanley Black & Decker has no “Stanley” rights.
“Stanley Black & Decker’s complaint takes aim at our century-old Stanley brand, apparently seeking to capitalize on our success and undermine over a century of innovation and hard work developing our food and beverage containment products,” says Matt Navarro, president of Stanley 1913. “Protecting and defending our brand is crucial.”
Matt Navarro
President, Stanley 1913
PMI says it will vigorously defend its case against the lawsuit and pursue all available remedies against Stanley Black & Decker.
Last month, PMI received a legal victory after a district judge dismissed a lawsuit that claimed PMI failed to warn customers that its products contain lead. The lawsuit stemmed from many customers taking to social media to share stories about using at-home tests to determine whether there’s lead in any of their Stanley products.
- Pacific Market responded by admitting that lead is used as part of the tumbler’s vacuum insulation, but that a stainless-steel layer prevents the toxic metal from coming into contact with consumers.
Promo Perspective
Protecting intellectual property (IP) is a major concern for the promotional products industry, which is fueled by creativity and innovation.
- Trademarks, copyrights and patents are designed to distinguish one’s products or services from another’s.
- Those protections enable customers to know what they can expect, ultimately building brand loyalty.
Although the need to protect IP isn’t called into play until someone infringes on it, suppliers, distributors, decorators and business service providers should keep an eye on the market to remain vigilant. For example, suppliers are urged to file a patent application before public disclosure.
“If you wait to file, you may waive your rights or limit the remedies,” said Justin Miller, Esq., a patent attorney with Larson & Larson, at the 2019 PPAI Product Responsibility Summit.
- In a landmark legal victory for the promo industry in 2018, a federal court jury ruled in favor of ETS Express after the supplier was sued for alleged trademark infringement by Can’t Live Without It, LLC, dba S’well Bottle.
Conversely, you don’t want to infringe upon someone else’s IP when creating or designing products. When accepting an order, distributors should avoid the obvious such as Disney, Star Wars, Marvel characters and the like, as well as famous landmarks, slogans, logos, likenesses of celebrities and photos and art of unknown origin.
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“Fair use laws remain extremely gray, and companies incorporating copyrighted assets into their work should be aware that the case-by-case and context-sensitive evaluation lends itself to much subjective speculation about how a court of law, i.e., a judge or a panel of judges, may apply an objective analysis in determining whether a use of a copyrighted work is fair and thus non-infringing,” wrote Cory Halliburton, an attorney with Freeman Law and general counsel for PPAI, in a 2023 commentary on the Copyright Act’s ‘fair use’ doctrine.
