By Rene Dial
First Descents files suit against Eddie Bauer for trademark infringement and cancellation of trademarks in the District of Colorado.
First Descents is an organization that offers young cancer fighters and survivors a free week long outdoor adventure to assist them in gaining back their confidence and reclaim their lives. You can read more at firstdescents.org. In the complaint First Descents claims to have been using the trademarked name since 2001. They received their trademark on March 11, 2003 for sport camps namely a motivational camp for people with cancer. First Descents sells apparel nationwide as a means of raising revenue for their camps. According to the complaint they attempted to add the clothing classification of goods with their trademark on September 23, 2008 but the mark was refused on December 22, 2008 because of the Eddie Bauer First Ascents and First Descents trademarks for clothing filed on June 2, 2008.
As the complaint was recently filed on August 10, 2011 Eddie Bauer probably has not responded yet. I cannot imagine what their response will be in their answer. Before filing suit I can only speculate that First Descents’ attorney served a cease and desist letter on Eddie Bauer requesting that they stop using their mark and putting them on notice of First Descents’ claim. As if Eddie Bauer should not have already been on notice of First Descents use of the mark for a motivational sport camp for people with cancer. A comon law trademark search would have uncovered First Descents’ use of the mark in connection with apparel that they allege to have been selling since 2001.
The complaint infringement of a registered trademark and cites15 U.S.C. § 1114(1) Any person who shall, without the consent of the registrant—
(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or
(b) reproduce, counterfeit, copy, or colorably imitate a registered mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive,…
This is my first time ever hearing about First Descents and I think they are doing an awesome service for cancer fighters/survivors. I myself just recently completed chemotherapy and am scheduled for radiation therapy to start soon. All I wanted to do during chemotherapy was to get back in the water and surf and be able to continue running events with friends. Testing myself through physical activity during and after treatment was a way of telling myself that I am still alive and still have a life to live. Zies Widerman and Malek recently hired me during my chemotherapy and allowed me the time off to recover when I needed it. Employers like ZWM and organizations like First Descents do our communities and cancer communities a great service by giving fighters and survivors alike more reasons to move forward.
I may be a little biased but I think First Descent has a very good argument. They have been using the name continuously since 2001 and should be able to prove that they have been selling clothing around that time. Their case would be even more bolstered had they originally filed a classification of goods for clothing.
Have a great weekend!