Aspen boot-ha-ha: Retail giant seeks declaration over use of the word ‘aspen’
February 19, 2013
One would think the word “aspen” would be generic enough to the point where a company couldn’t own the trademark rights to it.
J.C. Penney Co. Inc., whose headquarters are in Plano, Texas, has asked a federal court in its home state for a declaratory ruling on whether a style of weather-resistant boots that it recently started selling can continue to be called “Aspen” for certain labeling and packaging purposes. For example, on its own website, the retail behemoth markets women’s footwear it calls the “Arizona Aspen Cold-Weather Boot.”
A Boynton Beach, Fla., company called Aspen Licensing International Inc. owns a trademark for various commercial uses of the word “aspen.” In November, the company sent a cease-and-desist demand letter to J.C. Penney headquarters, alleging that its advertising and sale of cold-weather boots referred to by the style name “Aspen” infringed on that trademark, according to the federal complaint.
“Aspen is a weak trademark as a matter of law and is entitled to only a narrow scope of protection, if any,” J.C. Penney’s complaint states. “Defendant’s ‘Aspen’ mark lacks commercial strength because it is commonly used by third parties in the marketplace in connection with footwear and because of its generic reference to a geographical location.”
J.C. Penney contends that the “brand” of boot is called “The Original Arizona Jean Company” and “Aspen” is a “descriptive style name” that seeks to identify the sturdiness of the boot with cold-weather themes. The word is not printed anywhere on the boots, according to the complaint.
Over the years, Aspen Licensing has successfully represented itself in many legal battles over trademark use. Previous opponents include the likes of Victoria’s Secret, Columbia Sportswear and Alfred Dunner, said Perry Clegg, a trademark attorney in Salt Lake City.
In January, “Defendant (Aspen Licensing) specifically asserted that it is ‘entitled to compensation for sales using the Aspen name,’ and then again, demanded payment to settle the matter,” the complaint reads.
Clegg, who is following the case, said J.C. Penney is basically attempting an “end run” in its quest for declaratory relief by not going after the trademark itself.
“J.C. Penney is not challenging the validity of the mark because cases have already been tried that said the trademark registrations are valid,” Clegg said.
The lawsuit alleges that Aspen Licensing sells trademark-usage rights to third parties that manufacture various types of clothing and footwear.
Clegg said under federal law, a trademark owner cannot lay dormant for long.
“You can’t just go out and say, ‘I’m going to own “aspen,”‘ and do nothing more,” he said. “You would need to actually make use of the mark in connection with goods and services.”
A request for declaratory relief is a common legal response to an instance in which one party threatens to sue another for trademark infringement.
J.C. Penney is seeking compensation for its attorneys fees and a ruling stating that its use of the Aspen name for a “style” does not infringe upon the trademark rights.
“Rather than trying the trademark registration, they’re attempting to challenge the concept of infringement,” Clegg said.
Attempts to reach a representative in the Florida office of Aspen Licensing on Monday were unsuccessful.