A couple of weeks ago, I received a telephone call from a potential client located here in the Midwest. He told me that he recently received a letter from a trademark attorney representing Airwair International Limited. Airwair is the British company that manufactures Dr. Martens footwear. Now, if you’ve ever owned a pair of Dr. Martens boots, you might remember that almost all of them have a prominent black and yellow fabric tag that has the word AIRWAIR emblazoned on it (as shown in the photograph above). The word AIRWAIR refers to the fact that Dr. Martens boots have air-cushioned soles (called “bouncing soles”) that make the boots more comfortable to wear. According to the letter my potential client received, Airwair has been using the AIRWAIR trademark in connection with footwear and various clothing items for over 25 years in the United States and that it is the owner of several federal trademark registrations for AIRWAIR. I actually had a very cool pair of denim Dr. Martens boots back when I was in middle school and remember cutting off the AIRWAIR tag because I thought it looked stupid. As an adult, I am now aware that this was a sacrilegious act. Oops.
So, why did Airwair International have its trademark attorney send my potential client a letter in the first place? Well, my potential client had just started a small clothing company called “AirWear.” Although he had not yet manufactured or sold any clothing, he had purchased a slew of domain names that incorporate the word AIRWEAR and had filed a fictitious name registration with the Secretary of State indicating that he was going to be doing business under the AIRWEAR name. He also had a professionally designed logo which was displayed on a rudimentary website accessible at one of his domains. Airwair’s letter communicated its belief that my potential client’s use of AIRWEAR was an infringement of its long-standing federal trademark rights in AIRWAIR. As such, Airwair demanded that my potential client (1) cease and desist from using AIRWEAR in connection with clothing products, (2) discontinue use of all domain names that incorporate AIRWEAR, and (3) identify and transfer to Airwair all domain names that contain the AIRWEAR trademark.
Of course, my potential client was not too happy about receiving this letter. After all, he had already spent a couple of thousand dollars on developing the AIRWEAR trademark and didn’t want to basically have to start all over again. I suggested to him that we conduct a federal trademark search to verify Airwair’s claims of ownership in the AIRWAIR mark and to determine whether there were any other similar trademarks not owned by Airwair that were registered for clothing or footwear. He agreed with this course of action and hired me to perform the trademark search and to render an opinion as to whether his use of AIRWEAR was likely to cause confusion with Airwair’s use of AIRWAIR. My hunch was that there would be quite a few trademarks out there that incorporate both “air” and “wear” (or similar variations) considering that the words are not exactly unique.
Well, to my surprise, the search revealed that the only active trademarks in Class 25 (which is the clothing class) that contain “air” and “wear” (or “wair” or “ware”) were those owned by Airwair International. In addition, the search indicated that Airwair had filed a number of oppositions over the years against trademark applications for marks that it considered too close for comfort, such as UNDER AIR WEAR and BIG AIR WEAR. I relayed this unfortunate information to my client and advised him that he would spend substantially more money fighting Airwair than just simply phasing out use of AIRWEAR and transitioning to a new trademark. Needless to say, my client was disappointed to hear this news, but I think he understands that litigation under these circumstances would just be a waste of precious resources that could be better used to build his business.
Honestly, I believe the cease and desist notice from Airwair International was almost a blessing in disguise for my client because he received it prior to investing tens of thousands of dollars into the AIRWEAR trademark. Had Airwair found out about my client’s use of AIRWEAR five years down the road when his business was fully operational and generating decent income, it would have been much more difficult, expensive, and time-consuming for my client to make the change. All of the consumer goodwill and public recognition of the AIRWEAR trademark would be lost and it’s possible that my client’s business would have never completely recovered. This is why it’s essential to have a trademark attorney conduct a trademark search prior to adopting a new name for a product or service. It minimizes the risk of being sued for trademark infringement and gives you peace-of-mind that you aren’t stepping on the trademark rights of others.