Amazon Loses Bid to Dismiss William-Sonoma Claims of Trademark Dilution

Elizabeth DiNardo, Esq. | Associate Counsel

buy-3692440_960_720

On May 2, 2019, federal judge for the Northern District of California Elizabeth D. Laporte, rejected defendant Amazon.com Inc.’s (“Amazon”) bid to dismiss claims that the online retail giant has infringed upon and diluted Williams-Sonoma’s service mark and engaged in unfair competition by marketing Williams-Sonoma products for resale on its website.In the complaint filed on December 14, 2018, Williams-Sonoma alleges that Amazon intentionally confuses customers into thinking that Amazon is authorized to resell Williams-Sonoma products or is otherwise affiliated with the high-end retailer by displaying a hyperlinked phrase “Shop Williams-Sonoma” in the plaintiff’s recognizable yellow font. Once customers click on the hyperlink, they are taken to an Amazon webpage that features Williams-Sonoma copyrighted imagery along with counterfeit products for sale through Amazon.com with no official affiliation to the plaintiff.

The complaint describes plaintiff’s efforts over the last 60 years to build its brand recognition as a store that sells high-end and high-quality home furnishings, culinary equipment, housewares, kitchenware and cookware. Plaintiff states that Amazon has further tried to benefit from the brand by purchasing keywords nearly identical to the trademarked “Williams-Sonoma”. For example, if a consumer searches “williams sonoma” online, the second result will be a paid advertisement by Amazon that pronounces “Williams & Sonoma at Amazon.”

The plaintiff alleges that the products that Amazon sells on its website under the umbrella of the Williams-Sonoma name are deficient in quality, damaging in quality, damaging to the Williams-Sonoma brand and not subject to Williams-Sonoma’s quality controls. In addition to the subpar quality of the products being sold by the defendant, the plaintiff points out that frequently the products are priced significantly higher than the genuine items sold by Williams-Sonoma.

The case is: Williams-Sonoma Inc. v. Amazon.com Inc., Case No.: 3:18-cv-07548, in the U.S. District Court for the Northern District of California.

Subscribe_now


Counsel Financial provides working capital credit lines exclusively for the plaintiffs' bar in all states except California, where credit lines are issued by California Attorney Lending.