There’s an international legal fight playing out over the use of a blue-and-white check pattern.
The pattern of horizontal and vertical squares is actually trademarked by a mattress company in Sweden.
Somehow, the company got wind of its use in North Texas and is going after a Dallas furniture store owned by a mother and daughter who say they’re not backing down.
The owners of Coco & Dash Home along Henderson Avenue in Dallas have been at a crossroads when it comes to a $13,000 custom blue-and-white checkered sofa they designed and sell.
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Give in or fight back?
“We’re regular Texas women but Texas women don’t back down,” said co-owner Teddie Garrigan.
“The people that know us best just keep saying: They don’t know who they’ve messed with. They picked on the wrong girls,” added co-owner Courtney Garrigan.
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‘They’ is Hästens, a Swedish luxury mattress maker. Their horse-hair mattresses sell for up to hundreds of thousands of dollars.
The company’s attorney, David May of Nixon Peabody LLP in Washington D.C., recently sent a certified ‘cease-and-desist’ order to the Garrigans, accusing them of possible trademark infringement and potentially becoming ‘unfair competition’ over the furniture store’s use of the trademarked check pattern products, including the sofa.
The cease-and-desist letter states, ‘..the products Coco & Dash offers feature an almost identical design to the Hästens Check Designs.’
It goes on to say, ‘Coco & Dash’s use of the Hästens Check Designs is unauthorized and is likely to create confusion in the marketplace as to the source of the goods.’
Hästens indeed has eleven trademarks in the U.S. for everything from bedding to bathrobes and even socks, holding exclusive rights to check patterns regardless of the color or size, according to court documents.
“How did they get this trademark? That’s the big question here because it’s so overreaching,” said Teddie. “It’s too iconic and it’s popular. Everybody loves it and it should be in the public domain.”
She says the sofa in their store is based on a Gloria Vanderbilt ‘pink and white’ sofa from the 1970s.
“What’s next? Polka dots? Stripes?” asked her daughter. “They’re coming after you.”
The Garrigans insist this fight goes well beyond one sofa in a Dallas showroom.
“This is about a much broader issue,” said Teddie. “Trademark bullying is a real thing and it’s very detrimental to small businesses. I mean, I’m not a competitor for Hästens mattresses!”
The company’s attorneys have asked the store to stop selling products with a check pattern and to also provide an inventory of all products with checks sold or currently in stock.
“We’re not going to be bullied and they shouldn’t be able to bully any small businesses,” she said.
Mark Houston, associate dean for faculty and research at Texas Christian University’s Neeley School of Business, says trademark infringement lawsuits are pretty common in the U.S. with about 3,500 filed every year.
“[Trademarks] are supposed to be for the things that are unique,” said Houston. “So, it’s really unusual, I don’t think I’ve seen many like this where someone has taken just a basic shape and color variations and tried to claim that as unique.”
Houston points to the need for companies to protect unique symbols, like the Nike ‘swoosh.’
“It’s not just a check mark, it’s a very kind of unique style and shape,” said Houston of the Nike swoosh. “They consistently use that, they consistently protect that, so I think this one is actually pretty unusual.”
Houston, too, wonders how Hästens was able to receive trademark approval.
“I’m surprised that this was granted,” he said. “I do think if somebody took it all the way to trial [it] would not hold up, it would not be seen as a valid basis for a trademark if it went to the U.S. District Court, it just wouldn't survive. To be a trademark infringement, it has to cause harm to the trademark owner. Is Hästens really harmed by this small organization? The alternate condition is, does it create confusion in the mind of the consumer as to the origin of the good or service in question? And it's not like Hästens is a common household name.”
As far as whether it is an example of ‘trademark bullying,’ Houston said: “It would fit that kind of idea of trademark bullying that you own the trademark, not with the intent of actually taking people to court but hoping that the threat will produce some sort of revenue stream.”
The Garrigans filed a federal complaint for declaratory judgement in Dallas District Court in response to the cease-and-desist letter and to ensure court proceedings are kept in Texas.
The owners are seeking approval to continue the use of check designs and for Hästens’ registrations to be ‘declared invalid and ordered canceled.’
They hope to spare other businesses from an ordeal like theirs.
“We’re not going to be bullied and they shouldn’t be able to bully any small business,” said Teddie.
If found guilty of ‘willful infringement,' the penalty could be upward of $2 million dollars per item.
But these Texans aren’t afraid.
“What are they going to do to me,” said Teddie. “I guess I could decorate a really nice cell in the federal pen.”
NBC 5 reached out to the company in Sweden as well as attorney David May and have not yet heard back.
NBC 5's media partners at the Dallas Morning News previously reported on the issue. Click here for the DMN's article.
