Stanley B&D files suit against Stanley drinkware maker
When two iconic, well-known companies share a similar name, misunderstandings are bound to occur. That's why Stanley Black & Decker, founded in 1843, struck a series of deals with Stanley (of viral cup fame, founded in 1913) starting in 1966.
From the get-go, Stanley B&D sought to limit the range of products Stanley (whose parent company used to be Aladdin Industries but is now Pacific Market International or PMI) could feature as "Stanley-branded." Initially, according to a recent lawsuit, the deal limited Stanley to the narrow niche of "insulated containers adapted to keep their contents hot or cold." The agreement was revised in 2012 to specify the strange arrangement, with the filing offering more context:
"PMI’s use of STANLEY was limited to use on food and beverage containers (and their carrying cases), provided restrictions relating to PMI’s use of STANLEY as a company name, division, or proper noun, limited PMI’s use of STANLEY in connection with any website domain name, and also placed restrictions on PMI’s use of STANLEY on goods and advertising, all in an agreed-upon effort to differentiate Stanley’s overall company and existing brand from PMI’s limited use of STANLEY on food and beverage containers."
Now, in the aftermath of a large recall of Stanley travel mugs, Stanley B&D is crying foul. It writes in the complaint:
“PMI’s breach of contract and trademark infringement poses an imminent threat of irreparable harm to Stanley, the Stanley brand, and the goodwill and advantageous business relationships that Stanley has earned by using Stanley in commerce for almost two centuries."
In the lawsuit filing, Stanley B&D adds:
"PMI has willfully and intentionally ignored the carefully crafted restrictions of the parties' agreement, choosing instead to use Stanley broadly, including in ways that the parties' agreement expressly prohibited and that infringe on Stanley's trademark rights."
In a press release, PMI fired back:
"We own the 'Stanley' brand in the Food and Beverage container category. Stanley Black & Decker's complaint takes aim at our century-old Stanley brand, apparently seeking to capitalize on our success and undermine over a century of innovation and hard work developing our food and beverage containment products." said Matt Navarro, PMI WW Brands, LLC's Global President.
PMI goes on to argue that the two companies have distinct market positions, customer segments and marketing approaches, and their brand differences are "stark."
That determination now lies in the hands of a federal court in Connecticut. You can access the full lawsuit document here.
