Gilt storefront.JPG
Gilt, a boutique that sells antique and vintage jewelry on Northwest 23rd Avenue, is suing Gilt Groupe, an online flash-sale company based in New York, for infringing on its trademark rights.
(Courtesy of Gilt)
From time immemorial, new business owners have struggled to come up with company names that are catchy, memorable and at least a little bit descriptive. In the age of Google, though, that process is doubly hard.
When almost every small business has a website and a presence on any number of social-media platforms, it becomes increasingly difficult to come up with a name that isn't already claimed.
Elizabeth Milesnick, an intellectual property lawyer at
in Portland, said her firm has definitely seen an uptick in court fights over name issues in recent years. This week, Milesnick is trying to negotiate a settlement between Portland
and New York e-commerce company
.
The suit alleges that Gilt Groupe, founded in 2007, chose its name at a time the Portland store – founded in 1994 – was discoverable online, and the new company therefore infringed on Gilt's existing common-law trademark.
Paula Bixel, owner of Gilt, a Portland jewelry boutique
The lawsuit aims to block the New York company from using the name and cancel six of Gilt Groupe's trademarks. Boutique owner Paula Bixel is also seeking monetary damages.
The suit is one of an increasing number of lawsuits over brand confusion, Milesnick said.
"I would say that our firm is busier with trademark disputes than it has ever been," Milesnick wrote in an email to The Oregonian.
Last year, a gluten-free bakery in Lake Oswego
of the same name over rights to use the trademark to sell gluten-free sweets in the Northwest. The two shops reached an agreement, and the Lake Oswego bakery changed its name from Crave Bake Shop to Kyra's Bake Shop.
Earlier this year, Portland's Harvester Brewing offered its fans a chance to rename the company after a California wine producer
to prevent brand confusion. The brewery now goes by Ground Breaker.
In the digital age, the trademark activity of smaller companies is more accessible than ever, and it makes boutiques like Bixel's harder to overlook, Milesnick said.
When new companies choose a name, they now have to take into consideration the availability of website domain names and handles on multiple social media platforms.
"It gets harder and harder to find a name that is both compelling and unique," Milesnick wrote. "We certainly appreciate the challenges that a new company faces in coming up with a new name, but the Gilt case shows all the damage that can be caused when a smaller trademark user is overlooked. It is certainly worth the time and effort to come up with a name that is truly available."
The Gilt Groupe, Inc. distribution center, located in Shepherdsville, Kentucky
In Gilt v. Gilt Groupe, the lawsuit is what's known as a reverse confusion case, in which the second company to use a name becomes better known than the original user.
Bixel believes Gilt Groupe started selling jewelry around 2010 and estate jewelry about a year later. At that time, Bixel began to worry the online shopping giant was directly encroaching on her territory, and filed an application to register her own trademark in 2012. But her application was rejected because
said the name was too similar to those previously registered to Gilt Groupe.
However, Milesnick argues that Bixel retains common-law trademark rights, and these rights extend past Oregon state lines because she has shipped her products throughout the United States and internationally.
Bixel remembers when her friends, colleagues and customers first started asking her about the flash sale site.
"Everyone got confused," she said. "People I worked with asked me, 'Why are you sending me emails? When did you start selling clothes?'"
One day, Bixel's gardener, a longtime customer, told her he had started shopping on her website. But Bixel found he had been visiting the flash-sale site, all along thinking it was hers. (Bixel's website is
, while the larger retailer's is
.)
"She's damaged either way," Milesnick said.
Owner Paula Bixel sells antique and vintage jewelry out of Gilt, a boutique located on Northwest 23rd Avenue.
What's more, Bixel doesn't want her store's reputation as ethical and environmentally-friendly tarnished by the "impersonal and aggressively promoted" online sales company.
"I feel like my brand that I have worked my butt off to build for 20 years is just being squashed," she said. "It's just being consumed."
Gilt Groupe did not immediately respond to a request for comment.
Though the law firm filed the complaint, it hasn't yet been formally served on Gilt Groupe, Milesnick said.
"We're trying to see if we can leave a window of time and work things out," she said.
However, if Gilt Groupe does not respond by the end of the week, Milesnick will move forward with the lawsuit.
No matter how the case is resolved, with fewer attractive trademarks available every year, Milesnick does not expect the fight over good business names to end anytime soon.
"In general, I think that the battles for the really good trademarks are going to be more frequent and more heated," she said.
-- Anna Marum