ITA Helps U.S. Sporting Goods Manufacturer Regain Ownership of its Trademark in Russia
July 10, 2013
(ITA)
The International Trade Administration’s (ITA) helped Johnson Outdoors, an
outdoor recreational equipment manufacturer based in Racine, Wisconsin, regain
ownership of its trademark in Russia, which enabled the Company to sustain $100
million in annual revenue for its flagship Minn Kota brand.
Why it Matters
At risk for Johnson Outdoors was millions of dollars in sales and the poterntial
loss of hundreds of American jobs when a Russian competitor registered Johnson
Outdoors’ Minn Kota trademark. Johnson’s Congressional representative informed
ITA of this matter and it worked quickly to help Johnson Outdoors regain
rightful ownership of its trademark in Russia. This allowed the company to
continue selling in the Russian market.
The Problem
Johnson Outdoors, a manufacturer of equipment for fishing, diving, paddling and
camping had been selling its products in Russia for many years. In 2010, a
Russian competitor, JJ Group, registered the Johnson Outdoors’ Minn Kota
trademark with Russia’s patent office, the Federal Service for Intellectual
Property, without authorization from Johnson Outdoors. JJ Group attempted to sue
Johnson Outdoors for alleged violation of the trademark and then offered to drop
the suit and sell the rights to Johnson Outdoors for tens of thousands of
dollars. Johnson Outdoors’ legal counsel worked to obtain a cancellation order
for JJ Group’s trademark registration without success. In August 2011, Johnson
Outdoors turned to ITA for assistance.
The Solution
ITA, the U.S. Patent and Trademark Office, Office of the U.S. Trade
Representative, and the U.S. Department of State all worked to resolve this
issue. In December 2011, ITA arranged for a senior U.S. Government official to
call officials at Russia’s Federal Service for Intellectual Property to express
interest in proper protection of IPR. The conversation produced results and in
January 2012, the Russian company dropped its suit against Johnson Outdoors and
relinquished the trademark – at no cost to Johnson Outdoors. Johnson Outdoors
believes ITA intervention is what lead to the resolution of its trademark
dispute. The company is now the rightful owner of its trademark in Russia and is
pleased that it continues to enjoy access to the Russian market.
Working closely with U.S. companies, MAC creates, expands and defends market
access for U.S. goods and services overseas through the Trade Agreements
Compliance Program. “We promote policy that develops a more favorable business
climate for U.S. companies in global markets; we employ commercial diplomacy to
resolve trade barriers; and we leverage our bilateral and multilateral trade
agreements to ensure our trading partners live up to their commitments so that
our businesses can compete on a level-playing field.” - Assistant Secretary of
Commerce for Market Access and Compliance, Michael C. Camuñez.
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