Patagonia has put one of its latest trademark fights to bed. Just two months after filing suit against OC Media, an oil-and-gas marketing company, for allegedly infringing its famous wordmark and logo by way of a “Petrogonia” clothing range, the Ventura, California-based outdoor apparel-maker filed to voluntarily dismiss the trademark infringement, unfair competition, dilution, and copyright infringement case in its entirety, suggesting that the parties managed to settle their differences out of court.
Patagonia filed suit against Denver, Colorado-based OC Media in a federal court in California in February, accusing the marketing company of “blatantly disregarding” its rights in the “PATAGONIA trademarks” by “manufacturing, promoting, offering for sale, and selling apparel products and accessories bearing the ‘Petrogonia’ name together with a design that is nearly identical to [Patagonia’s] P-6 logo.”
According to Patagonia’s complaint, OC Media had adopted and was using a logo design that is “substantially similar to [Patagonia’s own] P-6 logo artwork, only replacing the mountain silhouette with machinery associated with oil wells that is staggered so as to mimic the P-6 logo, and adding ‘Petrogonia,’ a variation of the PATAGONIA word mark ostensibly intended to reference the oil and gas industry.” The brand went on to assert that there is “no explanation for the degree of copying involved in the design and branding of OC Media’s apparel and accessory products, except as a deliberate reference to the PATAGONIA brand and its trademarks.”
In furtherance of its trademark-centric claims, Patagonia argued that OC Media was not merely using the “Petrogonia” name and logo in a purely decorative manner, something that would likely enable OC Media to escape infringement liability (since infringement only applies when the allegedly infringing words and/or designs are actually used as trademarks, i.e., as indicators of the source of the products upon which they appear). Instead, it was, in fact, using the lookalike name and logo “as trademarks and source identifiers of [its business],” as indicated by the fact that OC Media had applied to register the “Petrogonia” name with the U.S. Patent and Trademark Office.
Patagonia went on to argue that OC Media had intentionally and willfully “adopted a mark, name and logo that copies the PATAGONIA trademarks” long after Patagonia first set up shop in 1973, and decades are its “trademarks became famous.” And famous they are, Patagonia asserted, noting that “in the more than forty years since [its] business started, the PATAGONIA brand and its P-6 logo have become among the most identifiable brands in the world.”
With that in mind, Patagonia argued that OC Media’s use of the lookalike and sound-alike marks “has caused or will cause a likelihood of confusion among consumers regarding the source of [OC Media’s] products and whether Patagonia has sponsored, licensed, authorized, or is somehow affiliated with OC.” Additionally, it claims that OC Media’s use of the marks “has caused or is likely to cause dilution of Patagonia’s famous and distinctive marks by diminishing their distinctiveness and singular association with Patagonia.”
As such, Patagonia set forth claims of the trademark infringement, unfair competition, dilution, and copyright infringement, and sought injunctive relief and monetary damages, including the profits that Patagonia alleged that OC Media made in connection with its sale of “substantial quantities of apparel products” bearing the allegedly infringing marks.
No stranger to trademark squabbles, Patagonia has taken on a whole array of companies over the years for their allegedly infringing uses of its famous trademarks – from its attempt to block the trademark registration for “Ganjagonia” (for use on animation production services such as “publishing or printed matter, books and electronic books; entertainment services, namely, providing information and commentary in the fields of authors, books, literary works and recommendations as to the same; providing a web site where users can post ratings, offer reviews and recommendations on literary works, books and printed matter”) to its currently ongoing legal fight with an Anheuser-Busch-owned company called Patagonia Brewing Co., which Patagonia claims is running afoul of its rights in the Patagonia name.
*The case is Patagonia, Inc. v. OC Media, LLC, 2:20-cv-01321 (C.D. Cal.).