Image: Diesel

Look beyond Diesel’s recent launch of a collaboration with Yuta Hosokawa of Japan-based upcycling label Readymade and the brand’s tie-up with Coca-Cola, in which it is offering up garments that are partially made from recycled plastic bottles, and you will see that the Italian fashion brand is in the midst of an ongoing legal scuffle. In fact, as of this month, a 3-year long trademark fight between Diesel and a couple of Discovery Channel reality show stars has turned into full-blown litigation centering on the word “Diesel.”

In a 54-page complaint filed in a New York federal court this month, Diesel S.p.A. and its American arm Diesel U.S.A. allege that Diesel Power Gear (“DPG”) – the company owned by Dave Sparks and Dave Kiley … or “Heavy D” and “Diesel Dave,” as they are known on their show Diesel Brothers– is on the hook for trademark infringement and dilution for making and selling garments and accessories bearing the fashion brand’s trademark-protected name.

According to Diesel’s complaint, DPG is in the business of selling Diesel-branded products, thereby, giving rise to a chance that consumers – upon seeing DPG’s products emblazoned with the word “Diesel” – are likely to be confused about the source of the products, or more specifically, consumers are likely to believe that the fashion brand is affiliated with, has endorsed or authorized by, or is somehow connected to DPG, or its products when that is certainly not the case.

More than merely a case of overlapping trademarks, Dieselclaims that DPG is acting with “bad faith intent, [as] evidenced by its use of a near identical mark with the identical background color of one of Diesel’s marks,” which Diesel says is “a clear [effort] to trade off of the fame and favorable reputation that Diesel and its trademarks have gained.” Additionally, Diesel claims that DPG goes even further by using a font that is “intended to evoke the [its] ‘Diesel’ trademarks” and confuse consumers.

Finally, Diesel – which says that its annual net sales in the U.S. were “approximately $100 million to $140 million per year from 2016 to 2018,” while its marketing annual budget during that period was “between $5 million and $6.5 million” – claims that DPG regularly “bids on a number of [Google] keywords comprised of the ‘Diesel’ trademarks and the primary categories of Diesel products, including both ‘diesel apparel,’ and ‘diesel clothing.’” As a result, “a Google search for ‘diesel apparel’ lists one of [DPG’s] websites as one of the top results, right alongside Diesel’s own website.”

 Some of DPG’s products Some of DPG’s products

With all of this in mind, Diesel claims that DPG is liable for trademark infringement and dilution, and unfair competition, and is seeking injunctive relief to prevent DPG from continuing to sell products with the “Diesel” name on them, in addition to monetary damages, such as an award of any profits made by DPG in connection with its sale of the allegedly infringing products and any damages that Diesel has suffered.

But that is not all that Diesel wants. The brand has asked the court to step in and help sort out an ongoing string of back-and-forths between Diesel and DPG that have been underway since DPG filed to register “DIESEL POWER GEAR” with the U.S. Patent and Trademark Office (“USPTO”) for use on “athletic shirts; Baseball caps and hats; Camouflage shirts; Graphic T-shirts; Hats; Hooded sweat shirts; Long-sleeved shirts; Shirts; Shirts and short-sleeved shirts,” among other garments and accessories, in October 2015.

Diesel swiftly opposed DPG’s application, arguing that the trademark was confusingly similar to its own already-registered “Diesel” marks, which it was using on the same types of goods. In a win for Diesel, that mark was never registered because DPG failed to respond to the opposition, and thereby, considered to have been “abandoned.”

That was only the start of the parties’ trademark clashes, though. In December 2017, “Over two years later, and notwithstanding … [DPG’s] unquestionable knowledge of Diesel’s prior rights in and to the ‘Diesel’ trademarks, [DPG] once again applied to register the trademark ‘DIESEL POWER GEAR’ with the USPTO” for use on clothing and accessories, Diesel asserts in the complaint. On the same day, DPG also filed an application for the trademark ‘DIESELSELLERZ’ … for ‘clothing, namely shirts, hoodies, sports caps, and hats.’”

Diesel opposed both of those applications, and went a step further and “put [DPG] on notice of [its] ‘Diesel’ marks and the infringing and illegal nature of [DPG’s] actions by sending [the company] a cease and desist letter,” which it says did little to deter DPG’s allegedly infringing use of the ‘Diesel’ trademarks, the fashion brand claims.

Now, Diesel has asked the court for “an order that [the potential] registration of [DPG’s ‘DIESELSELLERZ’] application be denied by the USPTO.” Interestingly, Diesel has not asked the court to take a stand on DPG’s pending application for “Diesel Power Gear” for use on various items of clothing and accessories, for which an opposition is currently pending before the USPTO’s Trademark Trial and Appeal Board.

*The case is DIESEL S.p.A. and DIESEL U.S.A., INC. v. DIESEL POWER GEAR, LLC, 1:19-cv-09308 (S.D.N.Y).