28 April 2021TrademarksMuireann Bolger

ADT sues Amazon’s Ring over ‘iconic’ octagon TM

US security company ADT is suing Amazon over claims that its subsidiary, Ring, infringed its “iconic blue octagon” trademark.

The complaint was filed at the US District Court for the Western District of California on Monday, April 26.

According to the complaint, Ring adopted a blue octagon mark that is virtually indistinguishable from ADT’s mark, which is protected under federal trademark registrations.

ADT claimed that its blue octagon is iconic in the security market, and that “it is proudly displayed on lawn signs and stickers at the homes and businesses of ADT’s more than 6.5 million customers across the US”.

It further alleged that following an attempt to imitate ADT’s lawn signs, Ring “blatantly assimilated” ADT’s logo into its ‘Ring Alarm Outdoor Siren’.

“Great brands like ADT don’t become universally recognised overnight,” said Trent Webb, co-chair, IP practice group of Shook, Hardy & Bacon, counsel for ADT in a  statement.

“ADT’s products, services, and reputation are built on a nearly 150-year history of innovation and reliability, and investment in its people and its products. Amazon’s Ring continues to take shortcuts to build its brand—to build its company—through blatant and repeated theft of ADT’s IP.”

‘Second attempt to infringe’

“ADT will protect its customers, its employees, its IP, and its reputation,” Webb added. “As such, we’re asking the court for, among other relief, immediate and permanent injunction against the use of ADT’s iconic blue octagon mark and for monetary and punitive damages.”

The latest alleged infringement is Ring’s second attempt to steal ADT’s IP, according to the security company’s complaint.

In 2017, ADT accused Ring of obtaining an unauthorised copy of a software platform, related trade secrets, and other assets that ADT had spent two years and millions of dollars developing. ADT successfully sued Ring at a federal court in Delaware,

ADT claims that following  its $1 billion acquisition by Amazon in February 2018, Ring is once again “seeking to tout a reputation for trust to potential customers that it has not earned”.

The complaint accused Ring of trying to trick customers, stating: “Indeed, even though the blue octagon mark that Ring is using includes the Ring name … people will believe that Ring is providing a security service on par with ADT—or, worse, that Ring is providing its security service in partnership with ADT.”

ADT’s suit alleges willful trademark infringement, unfair competition, and false designation of origin under the Lanham Act, common law trademark infringement, violation of the Florida Unfair Competition Law, and trademark dilution.

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