In the case filed in California, Home Depot sued Nimasara Industries, Inc. which purportedly does business under the name The Box Depot. See Home Depot U.S.A., Inc. and Homer TLC, Inc. v. Nimasara Industries, Inc. d/b/a The Box Depot, Case No. 10-cv-09300 (C.D. Cal. December 3, 2010) (complaint here). In the case filed in Florida, Home Depot sued a company doing business as The Beer Depot. See Home Depot U.S.A., Inc. and Homer TLC, Inc. v. The Beer Depot, Case No. 10-cv-24299 (S.D. Fla. December 3, 2010) (complaint here).
At first glance, these appear like cases where Home Depot is attempting to protect its “Depot” brand from being diluted from third party use of the same “depot” moniker in connection with some other product or service (reminds me of the slew of non-toy related businesses that adopted the “R Us” business moniker after Toys R Us made it so famous in connection with toy stores).
Of course, if this was the case, a quick look at the list of trademarks currently registered with the U.S. Patent and Trademark Office that follow the same “The ____ Depot” pattern is quite extensive and raises questions about Home Depot’s ability to claim that names which incorporate the terms “The” and “Depot” are likely to be associated with Home Depot when a term other than “Home” is used in between.
Most notably, Nimasara Industries, the company sued by Home Depot, is the assignee of a trademark registration for THE BOX DEPOT (registered in 2003). In addition, here are several other registered marks for various goods/services:
- THE TOOL DEPOT (interestingly, Home Depot did oppose this particular application for hardware retails stores services initially when it was published for opposition, but was apparently willing to dismiss the opposition when the applicant amended the trademark to remove the “The” – even though the registered mark still includes a design with the word “The” in it)
Home Depot describes these trade dress rights in one of its complaints as a “distinctive orange color scheme . . . used in and on its stores and in connection with the use of THE HOME DEPOT and THE HOME DEPOT & Design marks. This distinctive Orange Trade Dress includes the use of orange signage, stripes, lettering, and labels throughout its stores and on its building exteriors, as well as in its promotional materials.” Indeed, Home Depot even has a trademark registration for the “color orange” in connection with many goods and services described specifically as “The mark consists of the color orange used as a background for advertising, promotional materials, signage, and labels.”
In the Beer Depot complaint, the crux of the dispute appears to be that Beer Depot is displaying the name THE BEER DEPOT “in blocked stenciled-style lettering utilizing an orange color scheme, the natural effect of which is to make Defendant's usage of 'The Beer Depot' name and trade dress as close as possible to Homer TLC's famous Marks and imitate Homer TLC's Orange Trade Dress, evidencing an intent to trade on Homer TLC's goodwill by creating consumer confusion.” While I was unable to find the Google advertising referenced in the complaints (and chose not to download the exhibits), there was one photograph (link here) taken by Derick Glancy and posted on his Flickr page that shows what likely concerns Home Depot. Beer Depot has never responded to Home Depot’s cease and desist letters.
In the Box Depot complaint, once again, Home Depot’s complaint appears to be the use of a logo similar to Home Depot’s logo and the use of other “orange trade dress.” Specifically, Home Depot claims that Box Depot is operating “its business in a building with an orange stripe around the upper exterior perimeter. Defendant's name, both on Defendant's building and in Defendant's ‘The Box Depot’ logo, is displayed in blocked stenciled-style lettering utilizing an orange color scheme. The natural effect of these elements in combination is to make Defendant's usage of its ‘The Box Depot’ name, mark and dress as close as possible to Homer TLC's famous Marks and imitate Homer TLC's Orange Trade Dress, evidencing an intent to trade on Homer TLC's goodwill by creating consumer confusion.” The PDF of the complaint does contain the exhibits showing the alleged infringement, but as they are in black and white (and not very clear scans), one cannot really tell about the use of orange coloring although the use of blocked stenciled-style lettering is apparent – and it is a style that Box Depot had not previously adopted in its registered logo (pictured below). Indeed, the very fact that Home Depot is not seeking to cancel Nimasara’s current registration in its complaint shows that Home Depot is more concerned about Nimasara’s use of “The” and “Depot” in connection with an orange color scheme, rather than the words themselves.