Yesterday, I wrote about Contraband Sports LLC’s lawsuit for declaratory judgement that its four finger weight lifting glove does not infringe Fit Four LLC’s design patent D652,607. If this case goes to trial, could there be any difficulty arising out of Contraband’s name?
On one hand, a party’s name should have no bearing, merits-wise, on whether or not it infringes a patent. On the other hand, does Contraband’s name have a negative connotation that could impact the jury?
The Oxford English dictionary provides one definition of “contraband” as “goods that have been imported or exported illegally.” Merriam-Webster’s dictionary provides an other definition of the term as “illegal or prohibited traffic in goods.” Dictionary.com provides a definition of the term as “anything prohibited by law from being imported or exported.”
Say the defendant chooses to refer to the plaintiff in front of the jury as “Contraband” e.g. “Contraband asserts that…” “Contraband’s product has…” “Contraband’s president says…” “Contraband…” “Contraband….” “Contraband….” and so-on and so-on. Does that repeated use of “contraband” have an impact when Contraband is trying to show that its product is non-infringing; trying to show that its law abiding in the patent sense? It seems like a possibility. Sure, maybe it won’t have a decisive impact in most cases, but what about a close case?
It is probable that Contraband is using its mark in an arbitrary manner and does not illegally import its goods, if it imports at all. But, the focus here is on what perception a mark might engender to a jury.
Maybe this case will never make it to trial and it will never be an issue. And maybe the name is well received with customers in the same way less edgy words like “rebel” are received so that any potential downside in (rare) legal proceedings are offset by market benefits of the name. Nevertheless, its worth considering whether using a word as business name having a definition involving illegal activity could be a detriment when trying to show that you are, in fact, within the law.
Peter Thiel believes that company names are predictive of future success. And he criticizes the names of companies like Napster. I bet he wouldn’t like the name Contraband either.