Does anything say “Holiday Season” quite like one retailer suing another for trademark and patent infringement?
Housewares company Williams-Sonoma Inc. has sued Amazon.com, Inc. claiming that the web retail giant is trading on the Williams-Sonoma name and confusing consumers by setting up an unauthorized “Williams-Sonoma”-branded store and sections on its website. What’s more, Williams-Sonoma claims that Amazon has engaged in a “systemic campaign” to copy the patented designs of its West Elm-branded furniture to create cheaper knock-offs, even adopting similar names for products in the Amazon “Rivet” line of furniture.
An Amazon representative declined to comment on the lawsuit Monday morning.
San Francisco-based Williams-Sonoma claims that more than half its sales come via its e-commerce platform, which has been in operation since 1999. According to the complaint filed Friday by the company’s lawyers at Orrick, Herrington & Sutcliffe, Williams-Sonoma has recently received various complaints from customers who made purchases via Amazon’s website thinking they were buying directly from Williams-Sonoma. The suit claims that Amazon pages indicated the items were being sold “by Williams-Sonoma” or that they were “Best Selling Products from Williams-Sonoma.”
“Many of these products have been the subject of customer complaints on the Amazon website, are not subject to WSI’s quality control measures, and/or have been damaged or altered such that the WILLIAMS-SONOMA mark no longer properly applies,” wrote Williams-Sonoma’s Orrick lawyers.
The suit also claims that Amazon is using the Williams-Sonoma mark in direct email marketing campaigns while fulfilling orders for the underlying products itself. In particular, the complaint points to a Nov. 25 email Amazon sent to Janet Hayes, the President of the Williams Sonoma Brand, with the subject line: “Janet: Williams-Sonoma Peppermint Bark 1 Pound Tin and more items for you.” Williams-Sonoma claims that the $47.35 1 pound tin of peppermint bark in the email to Hayes was priced nearly double what the same item sells for on its own site.
The complaint also contends that certain items in Amazon’s “Rivet” line of furniture violate trademarks and design patents Williams-Sonoma holds for its West Elm brand. In particular, the Williams-Sonoma’s lawyers at Orrick wrote that Amazon’s Rivet Modern Upholstered Orb Office Chair is “so highly similar” to the West Elm Orb dining chair “that the ordinary observer would be confused by the imitation.” The lawyers contend that the same goes for the company’s “Slope” dining chair which also competes with an Amazon look-alike with a similar moniker.
“It is implausible Amazon could have conceived of a product line with nearly identical product designs which feature product names containing the very same non-descriptive terms WSI uses in connection with those products, other than by intentionally undertaking to copy WSI’s West Elm product line and appropriate the trademarks WSI uses in connection with that line,” the Orrick lawyers wrote.
The lawsuit asks for an injunction barring Amazon from using the Williams-Sonoma mark “in conjunction with its online retail services and otherwise infringing or diluting WSI’s marks.” The suit also seeks an injunction blocking Amazon from making or selling infringing goods. Williams-Sonoma is seeking statutory damages of up to $2 million “per counterfeit mark per type of goods sold” and treble damages for trademark counterfeiting.
Read the complaint: