Image: O’Neill

The ugly battle that has ensnared designer Thaddeus O’Neil and surfwear giant O’Neill for the past 5 years started simply enough: during the summer of 2014, Mr. O’Neil opened his mail to find a cease and desist letter with his name on it. Given the beachy-ethos of his then-1-year-old eponymous label – Thaddeus O’Neil – and the surf-centric marketing that came with it, the similarity between its name and the name of surfing-industry mainstay O’Neill was a bit too close for comfort, lawyers for O’Neill asserted in the letter. Formally put on notice of such alleged trademark infringement, a legal matter was born. 

The initial clash between Mr. O’Neil and Sisco Textiles N.V. (“Sisco”), the Luxembourg-based company that purchased the O’Neill brand and its intellectual property in 2007, unfolded entirely behind the scenes. The like-named brands managed to settle their differences and seemingly put their squabble behind them without so much as a media headline or a day in court. In the wake of the letter, the burgeoning young brand and the nearly 70-year old surfwear pioneer would appear to co-exist peacefully … until that was no longer the case. 

In early 2017, Sisco took action.

On the heels of Thaddeus O’Neil LLC filing an application for registration with the U.S. Patent and Trademark Office (“USPTO”) in LLC’s May 2016, seeking a registration for its name for use on clothing, “namely, shirts, belts, shorts, pants, footwear, gloves, hats, sweat shirts, sweaters, lingerie, jackets, coats, vests, socks, pajamas, skirts, dresses, swimwear, and undergarments,” as well as “handbags, purses and wallets,” Sisco called foul and initiated opposition proceedings with the USPTO. In the opposition that it filed in January 2017, Sisco argued that Thaddeus O’Neil’s application for registration should be blocked as the mark “is likely to cause confusion, or to cause mistake or to deceive” consumers given its similarity to an array of O’Neill’s existing trademark registrations, some of which date back to the 1970s.

According to Sisco, Thaddeus O’Neil LLC “seeks registration for goods that are identical to or closely related to some of O’Neill’s goods and services, as well as the goods and services identified in O’Neill’s [existing trademark] registrations.” As a result, the brand’s “mark and use [of that mark] is likely to cause confusion in, or to cause mistake by, or to deceive the trade and purchasing public into believing that [Thaddeus O’Neil LLC’s] goods originate with O’Neill or are otherwise authorized, licensed or sponsored by O’Neill” when that is not the case. 

Particularly problematic, Sisco asserted, is the fact that in addition to offering similar products under a similar brand name, thereby, creating a “substantially similar commercial impression” as O’Neill, Thaddeus O’Neil sells its products to at least some of “the same or overlapping consumers” as O’Neil, at least in part because both brands’ products “are directed towards people that surf.” 

With that in mind, Sisco argued that “O’Neill will be gravely damaged by the registration of the [Thaddeus O’Neil] mark,” while Thaddeus O’Neil would “reap the benefits of the goodwill associated with O’Neil.” 

Aside from the registration-specific issues at play, one of the glaring questions for Mr. O’Neil that was raised by the circumstances was his ability to use his name in a commercial capacity, something that no small number of cases – such as the one that Chanel filed against a woman named Chanel Jones in connection with her now-renamed business Chanel’s Salon – have proven is hardly an inalienable right, which is why so many name-specific squabbles have been resulted in litigation and loss for those with names similar to or the same as those of famous brands.

Ultimately, at the core of the parties’ (seemingly resolved) fight is the issue of confusion, a significant one when it comes to trademarks given that marks are meant to identify the goods/services of one brand and distinguish those goods/services from others. If similarly-situated brands have confusingly similar names or logos, it prevents their trademarks from functioning as trademarks. That is essentially what Sisco was arguing on behalf of its O’Neill brand. 

As the company noted in its initial filing, there are elements of the Thaddeus O’Neil brand that might lend themselves to confusion. For instance, Thaddeus O’Neil does, in fact, sell swim trunks and board shorts. It does picture models – surfboards in hand on its e-commerce site, and it does toss around terms like “surf culture” in its brand description, all of which would likely weigh in favor of a finding of a potential likelihood of confusion (i.e., the core element in a trademark infringement matter and the key complaint that Cisco lodged in its opposition). 

However, even with those things at play, the likelihood that consumers might confuse the products of the two brands and/or be misled into thinking that they are in some way affiliated or connected is not necessarily an open-and-shut issue, as there are factors that serve to distinguish the two brands. While some of the parties’ products may be similar, their price points and channels are distribution are not. O’Neil stocks its surfwear on its own website, as well as with Lulus, Macy’s, ASOS, and Nordstrom, while Thaddeus O’Neil almost exclusively stocks on its own site. 

Aside from different – and non-overlapping – channels of trade, the two brands’ price points differ. O’Neill sells sweatshirts and shorts for $55 and $49.50, respectively. Thaddeus O’Neil’s prices for those products start at $200 and can go as high as $950.  

Add to these distinctions potential differences in quality of the two brands’ offerings and the level of sophistication associated with the consumers at play, paired with the likelihood that Thaddeus O’Neil’s intent in adopting his trademark was not born from “bad faith,” by virtue of the fact that the brand name mirrors his personal name, and you have an array of factors that very well might weigh against a finding of confusion. Although, it seems we will never know.

For the much of the time since Sisco initiated its opposition, the parties have been engaged in settlement negotiations, according to recurring motions for the (temporary) suspension of the proceedings filed with the USPTO’s Trademark Trial and Appeal Board, the first of which came in September 2018. However, as of this week, a noteworthy development occurred. In a March 17 letter addressed to the Commissioner for Trademarks, counsel for Sisco revealed that it had withdrawn its opposition, a move that enables Thaddeus O’Neil LLC’s application to move forward in the pre-registration process. (Thaddeus O’Neil LLC’s application is still pending before the USPTO). 

Assuming that the parties did, in fact, settle their differences, thereby prompting Sisco to abandon its opposition efforts, then the fight is over. Although, there is no telling that the parties may not end up in a fight later on down the line, but until then, it seems that Mr. O’Neil will be “walking away from this with my name,” something he had previously described as the winning scenario.