Dec 4 2014

Protection of Client’s Trade Name

Xylem Group designs and manufactures a diverse selection of bath products and trademarked its Xylem name in 2005.  After spending six years establishing the Xylem name in the marketplace, ITT announced its spinoff and use of the Xylem name.  ITT filed suit against Xylem Group in federal court attempting to establish its rights to the use of the name “XYLEM.”  On behalf of Xylem Group, Fellows LaBriola counterclaimed for the establishment of its prior and superior rights to the exclusion of ITT’s new spinoff, and for damages.

While ITT argued that  Xylem Group established that ITT was no stranger to the plumbing industry as it once owned Friedrich Grohe AG and sold water flow devices such as pumps, valves and fittings under the Xylem name.  Fellows LaBriola was also able to document numerous instances where actual market confusion had adversely affected Xylem Group’s business.
On summary judgment, Xylem Group obtained an order from the district court establishing that the “Xylem” trade name was substantially similar to “Xylem” trademark, there was an overlap of advertising between the trademark and trade name, and actual consumer confusion existed. The court further found that the global parent company would be liable for contributory trademark infringement should its subsidiary be found to have infringed trademark. ITT Corp. v. Xylem Grp., LLC, 963 F. Supp. 2d 1309 (N.D. Ga. 2013).  After successfully getting past summary judgment on ITT’s defenses, Xylem Group’s claims were settled for a confidential amount.

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