IP Law Daily, TRADEMARK—NDIll: Vault Brands Not Liable for Using VAULT Mark on Custom-Built Cabinets, (Nov 19, 2012)

By Mark Engstrom, J.D.

A seller of custom-built metal cabinets (Vault Brands, Inc.) was not liable for trademark infringement for using the word VAULT as a trademark, the federal district court in Chicago has ruled (Edsal Manufacturing Co., Inc. v. Vault Brands, Inc., November 15, 2012, Dow, R.). The court granted summary judgment to Vault Brands because the plaintiff (Edsal Manufacturing Co., Inc.) failed to show that it had used the word “vault” as a trademark before the filing date of the defendant’s registration application.

In 2006, Vault Brands submitted an application to register the word VAULT as a trademark. The mark was issued in 2008. Edsal alleged that it had been selling metal cabinets under the “Vault” mark since 1996. Prior to 2006, however, Edsal never used the word “vault” to designate the source of its cabinets. Edsal did use the word to reference a line of locking storage cabinets, but it used it in the same manner that it used other generic terms, such as “commercial,” “industrial,” and “heavy duty.” More specifically, it used the word to describe the function or purpose of its locking storage cabinets, as illustrated by its slogan: “From Commercial, to Industrial, to Flammable, to Vault - Edsal can meet all your storage needs!” Because none of these generic terms identified their source, none of them were used as trademarks.

Merriam Webster’s Collegiate Dictionary (10th ed., 1995) defined “vault” as a “compartment for the safekeeping of valuables.” According to the court, this definition described Edsal’s locking storage cabinets. Further, the generic nature of Edsal’s use of “vault” was not changed by the fact that the company’s website—and its print and online catalogues—used the term in headings (such as “Vault Cabinets”) that were rendered in a font or typeface that was different than the font of typeface of the cabinets’ descriptions or model numbers. Significantly, headings such as “Safety Cabinets,” “Extra Heavy Duty Cabinets,” and “Commercial and Industrial Cabinets” were also set off from their descriptions with different fonts or typefaces. Those terms, however, remained generic, as did the word “vault.” Under these circumstances, none of those terms were capable of designating the source of Edsal’s cabinets.

Edsal also argued that it acquired a valid and protectable right in the term “vault” because it had used the term in commerce “for years.” Edsal cited case law to support this conclusion, but the issue in each of the cases it cited was whether the specimens that were attached to the trademark applications had demonstrated sufficient use of the purported marks in commerce, not whether the terms functioned as a source indicator. Although Edsal did use the term “vault” in commerce, the description of, or reference to, a generic quality or feature of its locking metal cabinets was not a trademark use.

Ultimately, Edsal never used “TM” to identify the word “vault” as a trademark and nothing in its materials even attempted to associate the word with the source of its cabinets. Further, Edsal’s website contained a list of 17 Edsal trade names, but the word “Vault” was not one of them. Because Edsal failed to use “vault” as a trademark, it failed to acquire any trademark rights to the term.

The case is No. 11 C 9287.

Brett A. Schatz (Wood, Herron & Evans, L.L.P.) for Edsal Manufacturing Co., Inc. Erin K. Lynch (Shefsky & Froelich Ltd.) for Vault Brands, Inc.

Cases: Trademark IllinoisNews