Teddie and Courtney Garrigan, owners of Coco & Dash, along with the sofa that is at the heart of the trademark dispute.
DALLAS — Teddie Garrigan, co-owner of Coco & Dash, has filed a suit against Swedish mattress maker Hästens in federal court, asking the court to find that the one-store retailer is not infringing on the blue check pattern for which Hästens is claiming trademark rights and is further attempting to have the trademark ruled unenforceable.
Garrigan is currently trying to serve the suit to Hästens in Sweden, as the retailer declined to waive service to its U.S. attorneys. As of March 2, Garrigan said in accordance with The Hague Convention, Coco & Dash’s attorneys have had the complaint translated into Swedish for service to Hästens in Sweden. It is currently in process.
Sister publication Furniture Today contacted Hästens for comment but to date has received no response.
When Teddie and Courtney Garrigan in late 2019, owners of Coco & Dash in Dallas, custom-ordered a blue-and-white checked sofa for their showroom, running afoul of the Swedish mattress maker’s trademark was the last thing on their minds.
“We have the one sofa, and we use it in design projects,” Teddie Garrigan told Furniture Today. “We had that sofa made based on Gloria Vanderbilt’s pink-and-white checked sofa from the 1970s. We didn’t even expect to sell the sofa; we did it for marketing.”
So, late last year when the mother and daughter were served a cease-and-desist order from Hästens, a luxury mattress maker from Sweden, they were taken aback. Teddie said she feels like her small business is being bullied.
“Trademark bullying is a real thing. They do it because most small companies are not going to (fight back). It’s very expensive, it’s time consuming, and pulls your attention away from your business,” Garrigan said. “They don’t go after big companies because big companies have deep pockets.”
Garrigan said in the cease-and-desist order, Hästens requires that Coco & Dash to stop selling the checked sofa and anything else in stock that has checks on it, and to provide a full inventory of anything they have ever sold that has a checked pattern, as well as a requirement that the Garrigans sign a nondisclosure agreement.
Garrigan contends that the checked pattern has been around long before Hästens trademarked it. “Trademarks are supposed to be based on their own intellectual property. They’re saying their intellectual property is the check design, and they require it to be referred to as the Hästens check design. I keep thinking, ‘tell that to Queen Charlotte,’” she said, referring to the 18th century royal who was widely known to use the pattern.
Right of usage will be at the heart of any legal arguments, said Jack Hicks, a Greensboro, N.C.-based attorney with Womble Bond Dickinson LLP. Hicks specializes in intellectual property and has worked with several clients in the home furnishings industry.
“Our trademark laws protect names, logos, images and even patterns where the trademark owner can demonstrate that consumers can be confused when they see that pattern or that trademark on a product they have not authorized or sold,” Hicks said.
He said there are instances in which a common item can be trademarked, but it will be up to Hästens to prove its trademark is being infringed upon.
“A misperception is you must have something original to use a trademark. That’s not true,” Hicks said. “Steve Jobs did not invent an apple or taking a bite out of an apple. He adopted it as his trademark. Bob Timberlake uses a feather. He did not create a feather; he uses it as a trademark.
“The questions are, has this check pattern been used before, and does it dilute the consumer perception of it. That will be an issue during the trial.”
Hicks likened enforcing a trademark to putting a fence around a property and then having to issue a warning when an outside party comes too close to that fence. “It’s still property. It’s putting a fence around what you perceive as your property. Hästens appears to be on a course of expanding its fence line. You don’t always win on that.
“If they haven’t demonstrated a use on sofas, they’re trying to expand that zone of expansion to broaden their trademark rights,” Hicks said.
Garrigan said a quick glance on Google reveals that Hästens might have its work cut out for it if it intends on ensconcing the pattern across the home furnishings universe.
“You’ve got companies like Serena & Lily that make and sell these things and Pottery Barn and Pottery Barn Kids; Wayfair. If you Google blue-and-white checked sofa, among the furniture product that comes up, there are hundreds and hundreds of companies. Then there are thousands of textile patterns with the check,” she said.
Garrigan said while the suit might prove to be time consuming and costly, it’s worth it to raise awareness and hopefully help retailers who might not have the same wherewithal.
“Our goal is for people to be aware of this issue,” she said. “This can have a far-reaching impact on our industry in general; certainly on anyone who sells a checked pattern. This is such a common, iconic pattern.”
Plus, she said, it’s the principle of the matter.
“They called a number of times about settling, and if we’d take down the social media, they’d move forward with a settlement. I’m not settling. I’m not agreeing to not sell checks. It’s a huge fine if you’re found to be willfully infringing. That’s why it’s so important that these are found unenforceable because it can be up to $2 million per incident. It’s crazy.
“The bottom line is I’m not being obstinate. This is a free market and free enterprise, and we had no idea we might be stepping on anybody’s toes,” Garrigan continued. “Beyond that, I can see them going after other small companies who might be intimidated or don’t have the resources to stand up. That’s not right. I’ve never liked bullies, and I’ve never let anybody bully me. And I’m not going to start now.”