October 12, 2007

In its recent complaint filed in the U.S. District Court for the District of Columbia, the Sheet Metal Workers International Association (“SMWIA”) alleged that West Coast Choppers, its popular figurehead Jesse James, and other defendants have infringed its long-standing federally-registered trademark. According to the complaint (contained within The Smoking Gun article linked below), the SMWIA, organized in 1888 and including tradesmen and industrial workers as its members, registered its association logo with the USPTO in 1961 (U.S. Trademark Reg. Nos. 718,265 and 718,364, both registered on July 11 of that year) and has used it in connection with association membership and “to identify plaintiff’s aforesaid services [including workplace safety, health and retirement benefits, and apprenticeship and training, all for its members], publications and web-site, as well as for items such as shirts, hats, jackets, watches, jewelry, accessories and union paraphernalia.”

More recently, a logo was made including the phrases “JESSE JAMES UNION” and “LESS TALKING MORE WORKING,” (instead of “SHEET METAL WORKERS’ INTERNATIONAL ASSOCIATION” as shown in the plaintiff’s logo), and has been used in connection with products and services of West Coast Choppers. The SMWIA alleges in the complaint that the defendants’ mark “was designed by copying from plaintiff’s aforesaid mark,” that it is “a simulation and colorable imitation of plaintiff’s federally registered mark,” and that the defendants’ acts “are likely to cause confusion, mistake or deception in that persons are likely to believe that defendants’ products and services are from plaintiff or are sponsored or approved by plaintiff or in some way related to plaintiff…” The SMWIA’s complaint concluded with a request to enjoin future use of the mark, to deliver up for destruction “all calendars and other materials bearing a colorable imitation of plaintiff’s mark,” and that the defendants’ pay plaintiffs all gains, profits, enrichments and advantages, three times the amount of all damages, and costs, fees, and disbursements related to the filed action. The SMWIA’s logo and the defendants’ logo appear in the upper right corner of this article for reference (click to enlarge).

The Smoking Gun Article: LINK
U.S. Trademark Reg. No. 718,265: LINK
U.S. Trademark Reg. No. 718,364: LINK
West Coast Choppers Website: LINK
SMWIA Website: LINK

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Mark Reichel
Reichel IP LLC

I am a patent attorney with Reichel IP LLC, where I concentrate my practice on patent drafting and prosecution, trademarks, and general intellectual property matters. I currently focus on the preparation and prosecution of medical device and other life sciences patent applications, and being actively involved in a number of local not-for-profit organizations.

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