I figured when we renamed our “white, cotton, one-piece, no leg, baby underwear-with-snaps-underneath” to something that no one will ever search for, Gerber would leave us alone. Nope.
Aquinas and More
Re: ONESIES® Infringement
Dear Aquinas and More,
Gerber Childrenswear LLC (‘Gerber’) is the owner of U.S. federal trademark registration numbers 1,292,981 and 2,549,557, respectively, for the ONESIES® mark and other trademark registrations pertaining to the mark, and Gerber’s exclusive rights in the ONESIES® mark are legally incontestable under §15 of the Lanham Act. As a result of Gerber’s extensive use and substantial money and effort invested in developing and promoting its ONESIES® mark for over twenty-four years, the public has come to associate Gerber with the ONESIES® mark, as well as the underlying goodwill and exceptional quality associated with this mark established by Gerber. Accordingly, Gerber takes any infringement of its ONESIES® mark seriously.
It has come to Gerber’s attention that you are utilizing the ONESIES® mark without Gerber’s permission (‘Infringing Use’) within the contents of the following URL(s):
You are not an authorized licensee of Gerber and have no authorization to use the ONESIES® mark, or any other designation confusingly similar to Gerber’s ONESIES® mark, and, therefore, your use of ONESIES® is a serious infringement of Gerber’s valuable proprietary rights. Furthermore, your use of the ONESIES® mark, or any other designation confusingly similar to Gerber’s ONESIES® mark, is misleading and confusing to the public as to the source, affiliation, and sponsorship of the Infringing Use, as the public is likely to assume there is an affiliation with the well-established ONESIES® mark. Such confusion results in substantial damage to Gerber’s proprietary rights, including dilution of the ONESIES® mark and the goodwill associated therewith.
Accordingly, on behalf of Gerber, we demand that you immediately cease and desist from any further use, display, or publication of the ONESIES® mark in any form. Gerber expects that you will comply with the aforementioned demands within seven (7) days from the date of this notice, and provide Gerber with assurances of compliance on or before this date via email at firstname.lastname@example.org. Should you fail to comply with these demands, please be assured that Gerber will vigorously protect its proprietary rights by seeking legal enforcement of its trademark rights and pursuing any and all legal remedies for damages arising from trademark infringement, trademark dilution, and unfair competition.
They didn’t even bother to look at the page because the page doesn’t mention ***sies anymore. They just took the original link that contained the brand-that-cannot-be-mentioned and assumed that because the link still goes to a page on our site, we must still be using their name. What they don’t realize is that I can replace the item title with whatever I want, say,
“http://www.aquinasandmore.com/index.cfm/title/Gerber-Brand-Enforcement-is-derilict-in-its-duties-and-wasting-company-money-being-silly/FuseAction/store.ItemDetails/SKU/9490” and it will still go to the same page. Time for Gerber to get some Internet training for the Brand Enforcement Division.
Here’s the note I sent back to them:
If you actually read the page in question there isn’t a single mention of onesies anywhere on it. I’m sorry that your company is so slow to prosecute these critical violations of your property rights, our supplier has been calling these white, one-piece baby outfits “onesies” for at least three years before you took notice.
I noticed that doing a Google search for the word onesie results in 1.9 million results, most of which have nothing to do with Gerber. It looks like you are going to be up late tonight sending out your letters.
I’m wondering what kind of goodwill they are trying to build with this strategy? How many people actually know that ***sie is trademark? How well can Gerber be trying to protect its rights when there are 1.9 million Google results for the word.