Imagine that we are back in the 1980’s. Madonna or Michael Jackson is playing on the radio, big hair is abundant and someone walks into the room wearing the latest fashion trend – sunglasses with slats. Fast forward 20 some-odd years to 2007. Kanye West is topping the charts and wears those same sunglasses during his “Stronger” music video and during some performances.
Donald Wilkerson is watching TV and catches Kanye’s new look. He has a brilliant idea – he should copy those glasses and sell them. And this is exactly what he does. Mr. Wilkerson, working with a manufacturer, creates a replica of the glasses and files a trademark application for SHUTTER SHADES. At the same time he filed a design patent for “Sunglasses Without Lenses but Having Six Horizontal Slats Crossing the Field of Vision of Each Eye”. He also incorporated his company, Shutter Shades, Inc. (SSI).
When his trademark was published for opposition CTS Wholesale, an eyewear wholesaler, took notice. They opposed the trademark as a generic name, arguing that the term “Shutter Shades” has been in use since the 80’s. In 2009 SSI and CTS reached a settlement. CTS would withdraw their trademark opposition in exchange for a royalty-free license to Shutter Shades.
This was the turning point for SSI. Between 2009 and 2012 they sent out many cease and desist letters to those who sold similar glasses or used the term “shutter shades”. They entered into licensing agreements with six companies who paid royalties to use the patent and trademarks for Shutter Shades.
During this time they sent a demand letter to AmScan, a discount party-goods distributor used by Party City. AmScan and Party City sued SSI and its owner, Donald Wilkerson. The judge ruled that since SSI had engaged in “naked licensing” by handing out licenses to anyone who would pay for one and failing to control the quality of products bearing the SHUTTER SHADES mark that they were no longer entitled to protection.
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