Sears Roebuck and Co. and one of its companies have filed suit in U.S. District Court in Chicago against a Georgia online company for selling a sexual enhancement product marketed under the “DieHard” brand name.
Sears and KCD IP LLC, an affiliate of Sears which owns trademark rights to “DieHard,” charge that RockHard Laboratories LLC and RockHard Laboratories Holdings LLC infringed on its trademark and caused its reputation to suffer from the online marketing of RockHard’s topical desensitizing spray.
Sears’ suit, filed Wednesday in federal court, said the DieHard name, which is used on vehicle batteries, auto parts and services, clothing and race promotional activities, was first registered as a trademark in 1992. In 1997, Sears and KCD registered several Internet domain names using the word ‘DieHard.’
In February 2010, the suit alleges, RockHard registered the domain name diehardspray.com and sought to trademark the phrase ‘Die Hard. Live it. Love it. Own it,” the suit states. Sears complained and while RockHard abandoned the trademark application and said it would stop using the “Diehard” trademark, it has continued to do so.
RockHard’s continued use of DieHard “in connection with a ‘numbing agent for male genitalia,’ has diminished, blurred, and tarnished, and will likely continue to diminish, blur, and tarnish Sears famous DieHard marks. For example, defendants’ advertisements on their website have shown a partially naked woman laying on top of the word DieHard,” the suit states.
In an emailed statement, a spokesman for RockHard said the company “takes intellectual property concerns very seriously, and we are reviewing the complaints made by Sears. RockHard Laboratories will offer additional comment once its had the opportunity to thoroughly investigate the matter.”
Sears, which has asked for a jury trial, is seeking to have RockHard end its use of the ‘DieHard’ name, turn over its Internet domain name and pay damages and the cost of an ad campaign to correct any damage to the DieHard brand reputation.
A spokesman for Sears said the retailer does not comment on pending litigation. Efforts to reach RockHard, of Alpharetta, Ga., were unsuccessful.
Sometimes it is best to just let certain things go by the wayside and they will go away quietly…but now the hits for the Die Hard spray have gone through the roof and men will never look at their tools (the ones from Sears and who knows what else…LOL) the same way again. This is the two minutes of fame and front page news that Rockhard Labs has been looking for…..
Sex sells. Sears will get free advertising, and it will likely enhance their brand recognition and the attitude toward their brand. And they will protect their intellectual property at the same time.
My understanding of trademark law is that if you don’t defend it then you lose it. Then again, I don’t think anyone’s going to confuse this spray with a Sears battery.
Why wouldn’t Sears file suit? It’s their trademarked name. Why should they let anybody use it, let along this company?
This publicity might cause Sears stock to “rise”. Why would you want to numb your nether region anyhow? Its counter(re)productive.
Both of the companies will be a memory in five years.
Trademark law should favor Sears on this one
Trademarks are registered in product categories. Sears doesn’t likely have a trademark in the numbing agent category. Unless the numbing agent comes in packaging that looks like a car battery it is unlikely to cause confusion for sears.
A person isn’t illegal… neither is an act. Ron Paul 2012, end all laws!!! Put Bush and Cheney in prison since President Obama refuses to do the job!