A Canadian brand doesn’t want anyone else putting down roots with its trademarks.
Roots Corporation filed a lawsuit in Michigan’s Western District on Aug. 8, alleging that Midwestern superstore chain Meijer had infringed on its trademarks and engaged in unfair competition against the brand.
Roots sells casual apparel, athletic gear and more, and while its headquarters is in Canada, its flagship store is in Michigan, where some Meijer stores operate. The clothing brand has alleged that Meijer has infringed on its trademarks by applying for a trademark called “Roots & Threads,” in association with a back-to-school line for this year.
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Roots claimed that Meijer has an interest in “freeriding off the goodwill that Roots has invested in building around its beloved…brand for more than half a century,” in part because Roots offers children’s clothing. The company further alleged that the move would create “inevitable confusion among consumers” who could be shopping for apparel “in Roots’ own backyard.”
Roots owns trademarks like “Roots,” “Baby Roots,” “Roots Kids,” “Roots Athletics” and more in reference to fashion and apparel products. The company contended that the hundreds of trademarks it owns globally protect its rights on products that would compete with those Meijer has allegedly looked to protect with its Roots & Threads application.
According to Roots, the U.S. Patent and Trademark Office (USPTO) issued a non-final office action in May, citing likelihood of confusion with Roots’ trademarks as the reason. The office issues that kind of order when they need more information about a potential mark; in this case, Roots alleged, overlap with its trademarks are preventing Meijer from winning the right to the Roots & Threads trademark it has requested to register. When the USPTO issues a non-final action like this, the company or individual applying for the mark still has a chance to defend the reasoning behind the mark, request reconsideration and more. So, while the USPTO has not approved Roots & Threads as a mark owned by Meijer, the registration is still pending.
Roots said that, upon finding out about the application for registration, it “wrote to [Meijer] to request that [it] abandon its efforts to move forward with its plans to register and use the Roots & Threads mark,” but noted that Meijer has not withdrawn its application.
According to Roots, it has partnered with other brands and retailers on collections in the past, but had no plans to do so with Meijer. The existence of those prior collections, though, has the brand worried that consumers will confuse alleged Roots & Threads products as being sanctioned by Roots.
“Because Roots, along with a number of other major brands, routinely licenses rights to other retailers to make lower-cost versions of their products, Roots is concerned that consumers encountering the Roots & Threads goods will mistakenly assume that [they] are an authorized extension of the Roots brand,” counsel for Roots wrote, also noting that Roots & Threads items would not “meet the quality and durability standards” that Roots products are required to live up to.
Roots alleged that Meijer is “intentionally capitalizing” on potential consumer confusion. In doing so, it said Meijer could “injure Roots’ relationships with its customers” and “deprive Roots of control over the nature, design and quality of products associated with the Roots mark.”
In Roots’ eyes, Meijer’s alleged actions constitute trademark infringement and unfair competition. In the complaint, Roots has requested that Meijer be preliminarily and permanently enjoined from creating, importing, selling and advertising items using the Roots & Threads mark “or any other name or mark containing Roots that is likely to cause confusion” and from “taking any action that would cause any consumer to be mistaken, misled or deceived as to the nature, quality or characteristic of any of the Roots & Threads goods.”
Roots also requested that Meijer be required to stop selling any Roots & Threads-branded merchandise, then deliver any remaining Roots & Threads merchandise to the company for destruction.
What’s more, Roots has asked that Meijer be required to abandon its Roots & Threads trademark application and that it pay Roots any applicable profits and damages.
Meijer did not immediately return Sourcing Journal’s request for comment on the complaint.
