Troutman Sanders Secures Noteworthy Trademark Win for Client Pergo (Europe) AB
ATLANTA – Troutman Sanders recently represented its client, the renowned Pergo laminate flooring brand, in a trademark infringement lawsuit against Stanley Black & Decker, Inc. (Stanley Black & Decker), which owns the DeWalt brand. Pergo, a wholly-owned subsidiary of Mohawk Industries, Inc., the largest flooring manufacturer in the world, sued Stanley Black & Decker for trademark infringement after it began using the PERGO mark on DeWalt brand laminate flooring saw blades without Pergo’s permission.
Last week, Judge Harold Murphy of the Northern District of Georgia entered a comprehensive Order granting Pergo’s Motion for Summary Judgment on trademark infringement and unfair competition, and denying Stanley Black & Decker’s Cross-Motion for Summary Judgment based primarily on an alleged “fair use” defense.
Based on “overwhelming” evidence of Stanley Black & Decker’s bad-faith, willful infringement and the need to deter future misconduct by Stanley Black & Decker, the Court awarded Pergo all of its requested monetary damages, totaling over $570,000.00. The Court also ordered Pergo to submit a Proposed Permanent Injunction and Recall Order requiring Stanley Black & Decker to withdraw the infringing saw blades from resellers.
“This is an important and notable trademark win,” said Michael Hobbs, a partner in Troutman Sanders’ Intellectual Property group. “It’s difficult enough to get an injunction in a trademark case against a large company like Black & Decker, but to also get nearly $600k in damages is really outstanding, particularly on summary judgment.”
“Pergo has a strong trademark and our evidence showed -- and the Court affirmed -- this afforded the company a wide scope of protection,” said John Bowler, a partner in Troutman Sanders’ Intellectual Property group and lead counsel on the case. “We are very pleased with the Court’s decision.”
The Troutman Sanders team representing Pergo in this matter included Intellectual Property partners John Bowler, Michael Hobbs and associate Lindsay Mitchell Henner.
Troutman Sanders’ trademark attorneys offer clients the full spectrum of domestic and international trademark-related services. The firm’s extensive experience includes handling matters involving trademarks, service marks, counterfeiting, trade dress, trade names, false advertising, and other intellectual property and unfair competition issues.
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