Last updated on February 5th, 2020 at 12:53 pm
Brookfield-based Milwaukee Electric Tool Corp. is suing the New Jersey company behind the Milwaukee Leather brand of motorcycle apparel, alleging its heated gear “looks nearly identical” to Milwaukee Tool’s, infringing on the company’s trademarks.
The lawsuit, filed last week in the U.S. District Court for Eastern Wisconsin, seeks an order blocking Garfield, N.J.-based Shaf International from making, selling, marketing or distributing heated gear, tool bags and other tool-related goods that incorporate the word “Milwaukee” or other marks that are a “confusingly similar variation” of Milwaukee Tool’s marks.
It also asks the court to require Shaf to pay Milwaukee Tool any profits from its violations along with three times the company’s actual damages and punitive damages as the court finds appropriate.
Milwaukee Tool’s complaint says it had established its rights for using the “Milwaukee” marks on heated gear as early as 2010 while Shaf had not used any of its trademarks on heated gear until at least 2016.
The company also noted it has used the Milwaukee trademarks with apparel since as early as the 1970s while Shaf had first registered its trademarks in 1998.
In addition to describing Shaf’s products as “nearly identical,” Milwaukee Tool pointed to “actual consumer confusion identified in the question/answer and review sections of Amazon.com listings for Shaf’s goods.”
“It is not real obvious but this is not a Milwaukee Tools heated hoodie but a MILWAUKEE LEATHER hoodie,” one comment said. “Thus it is not compatible with Milwaukee batteries as one would expect.”
“This is not a Milwaukee tools product,” another comment said. “It is a cheap version that does not work as advertised and runs extremely small. Highly disappointed and feel ripped off.”
Milwaukee Tool also pointed to customer comments describing the Shaf products as a “terrible product,” “poorly made” and “low quality,” arguing that Shaf diluted Milwaukee trademarks, blur their distinctiveness and tarnish and harm their reputation.
Lawyers for the two companies have been going back and forth over the last year. Milwaukee Tool sent a cease and desist letter to Shaf in March and the companies exchanged letters in April. According to Milwaukee Tool’s response to an April 18 Shaf letter, the New Jersey company contends that it has priority for the marks and goods at issue in the case.
The two companies are also battling over a trademark Shaf filed for in 2018 for “Milwaukee Performance.” Milwaukee Tool objected to the trademark in March, arguing it was likely to cause confusion and irreparable damage to Milwaukee Tool.
In its response, Shaf argues that Milwaukee Tool had failed to oppose Shaf’s use of a similar trademark on several of the same items for eight years after it was first used and for four years after Shaf registered the other mark.
Shaf also contends that Milwaukee Tool’s rights for its trademarks used on clothing products “are exceedingly narrow by virtue of third-party use, including but not limited to the rights of the Milwaukee Brewers Baseball Club.”
Shaf noted that the Brewers opposed Milwaukee Tool’s 2010 trademark filing for use on jackets, shirts, sweatshirts and hats. The team and company had engaged in settlement talks since 2012. In October 2019, Milwaukee Tool amended its application to exclude clothing relating to baseball, softball, a team, league, mascot or stadium, according to U.S Patent and Trademark Office records.