Intellectual Property Law

Court Finds No Trademark Acquiescence Through "Apparent Authority" Theory

By Michael Atkins

In Scentsy, Inc. v. deDisse, wickless candle maker Scentsy filed a trademark infringement suit in the District of Idaho. It claimed its former independent sales person, Mary deDisse, melted down its candle wax, repackaged it in smaller containers, affixed Scentsy’s logo, and sold the altered product to Scentsy’s authorized sales persons for resale. It sought a preliminary injunction enjoining this practice.

Ms. deDisse argued that Scentsy gave her permission to use its mark through its independent consultants, who had “apparent authority” to authorize her use of the Scentsy logo on altered and repackaged product. She argued its having done so amounted to acquiescence.

The court didn’t buy it.

It found Scentsy’s independent sales consultant agreement prohibits its sales persons from repackaging, re-labeling, or altering the labeling on Scentsy products — which as a former Scentsy sales person Ms. deDisse knew or should have known. The court also found that Scentsy dispelled any impression that it approved of deDisse’s conduct by sending her three cease-and-desist letters before filing suit.

“The promptness and frequency of Scentsy’s objections demonstrate Scentsy’s vigilance in protecting its trademark rights — not its acquiescence to deDisse’s use,” the court found.

It noted that acquiescence is a defense to trademark infringement, but Ms. deDisse did not show it here.

It concluded that “deDisse’s attempt to rely on emails from Scentsy consultants to establish consent is unreasonable in light of Scentsy’s formal and repeated objections to deDisse’s use of its mark. Therefore, Scentsy has shown it is likely to prevail on the merits of its Lanham Act claims.”

It granted Scentsy’s motion.

The case cite is Scentsy, Inc. v. deDisse, 2010 WL 1579688, No. 09-496 (D. Idaho April 19, 2010).

Full post as published by Seattle Trademark Lawyer on April 27, 2010 (boomark / email).