In the summer of 2012, 12-year-old Sophia Forino of Watertown, Connecticut came up with a great idea for a new product. This young entrepreneur wanted an innovative and creative way to keep her cell phone screen clean, so she simply placed some adhesive tape on the back of a microfiber cloth and attached it to the back of her phone. After a few months of testing and re-designing, Sophia and her younger sister Marissa decided to create a business out of it and call the product HypeWipes.
Now, two years later, these school girls and their start-up company, HypeWipes LLC, are facing a $1 million dollar federal lawsuit.
Hapak Enterprises, Inc., also known as Current Technologies, has filed the federal lawsuit against HypeWipes, LLC based on its own anti-bacterial disposable towelette called Hype-Wipe.
THE COMPLAINT REQUESTS THAT THE USPTO REJECT HYPEWIPES LLC’S THEN APPLICATION FOR HYPE WIPES AS CONFUSINGLY SIMILAR TO HYPE-WIPE
Current Technologies owns U.S. Registration No. 2804668 for the trademark HYPE-WIPE. This registration covers pre-saturated disinfecting towels for wiping counter tops and other surfaces in International Class 5. This trademark was granted registration on January 13, 2004, but Current Technologies claims that it has used this mark in connection with these products since at least 1994. Based on the company website, these HYPE-WIPE towelettes are sold mostly to hospitals and laboratories for use as a disinfectant, intended to kill various bacteria and viruses.
Interestingly enough, more than ten years later, on August 12, 2014, the girls’ start-up company was also granted a U.S. Registration No. 4585584 for HYPE WIPES, covering decals and stickers for cleaning electronic devices in International Class 16. This trademark has not been in use for nearly as long as its predecessor, only since February 21, 2012.
Below is an image of a Current Technologies HYPE-WIPE-branded product, as well as an image of the girls with their own HYPE WIPES-brand product:
The renewal for Current Technologies’ senior registration was timely filed on January 7, 2014, and the renewal was accepted on January 25, 2014. And yet, somehow, the USPTO Examiner did not cite this prior registration as a confusingly similar mark when HypeWipes LLC applied for its own trademark. HypeWipes LLC’s trademark was published for opposition on October 22, 2013, yet Current Technologies did not oppose. Further, Sophia and Marissa’s father, Rocco Forino, who has helped them throughout the business development process, says he had conducted a Google search, and even hired a professional third-party search company to ensure there were no prior similar marks. He says that both searches revealed nothing.
However, this summer, Sophia and Marissa reportedly received an e-mail from Susan Hapak, President of Current Technologies, alleging that HypeWipes LLC was infringing on their trademark and that they must cease all use of the HYPE WIPES mark immediately or else legal action would be taken. The father also added that not only did Ms. Hapak send a cease and desist letter to the girls, she also sent letters to each of the distributors they do business with, as well as the girls’ schools, warning that if the schools used the HYPE WIPES mark as any type of fundraiser, that the school would also face legal action.
Then, on June 27, 2014, Current Technologies filed suit. In addition to alleging trademark infringement and related claims, the Complaint requests that the USPTO reject HypeWipes LLC’s then application for HYPE WIPES as confusingly similar to HYPE-WIPE. Among several of Current Technologies other demands include that the court preliminary enjoin the defendant from using HYPE WIPES or any confusingly similar mark; that the defendant recall, at its own expense, all product or promotional material incorporating the HYPE WIPES mark or any confusingly similar mark; that the defendant disable its domain name www.hypewipes.com; and, most significantly, that the defendant pay Current Technologies for damages caused by the allegedly infringing use of the HYPE WIPES mark. According to the Complaint, Current Technologies believes that it has been damaged in excess of $1 million dollars.
In a change.org petition the father created to help mobilize public support against Susan Hapak and Current Technologies, he explains that HypeWipes LLC was willing to accept most of the demands. After all, this small start-up company did not have the funds to successfully litigate an expensive trademark infringement suit. He states that it agreed to abandon its trademark registration, to stop selling under its existing brand, and to disable its domain name. However, these concessions were not enough for Current Technologies to drop the lawsuit. It seems that one of the only demands that HypeWipes LLC did not agree to was to pay the company $1 million dollars.
WHEN ENFORCING TRADEMARKS, RIGHTS HOLDERS SHOULD ALWAYS FIRST ASSESS THE SENSITIVITY OF EACH SITUATION AT HAND BEFORE EMBARKING ON CEASE AND DESIST LETTERS AND FEDERAL LAWSUITS
Of course, it is the responsibility of trademark owners to police their marks. Arguably, Current Technologies was simply exercising that right. Current Technologies’ HYPE-WIPE mark was in use long before Sophia and Marissa even thought of their HYPE WIPES product, much less before the girls were even born. It is likely that the court will determine that Current Technologies is the senior user of the mark, that HypeWipes LLC’s subsequent use was confusing to that of the senior user, and that HypeWipes LLC’s registration be cancelled. Even though the products at issue differ, the marks are almost identical. Based on a trademark infringement analysis, we reluctantly agree that the girls are probably out of luck.
However, the insistence on wanting to collect $1 million dollars in damages from a 14-year-old girl's start-up is astonishing on several levels. Regardless of how Current Technologies plans on somehow proving damages in that amount, from a public relations and marketing standpoint, this was a poor decision. Now, Current Technologies is seen as a bully that is not just rightfully focused on enforcing its trademark rights, but insists on extracting millions of dollars from well-intentioned, business-minded children.
When enforcing trademarks, rights holders should always first assess the sensitivity of each situation at hand before embarking on cease and desist letters and federal lawsuits. What may seem appropriate from a legal perspective may not be appropriate from a human perspective.