Seafood distributor Martin International won its lawsuit against International Market Brands (IMB) last week, putting a clean end to its first debut in court to defend its Black Pearl International brand's trademark.
Although Martin International President Dick Martin did not get all the money he was after in the lawsuit, he says the amount paid out was "considerable."
"It wasn't enough, but it took the pain away," Martin told IntraFish.
IMB was a customer of Martin's for a year. Then, in 2008, Martin's attorney contacted him.
"IMB had filed for (trademark) registration of Black Pearl pork," Martin said.
Martin filed a lawsuit that year. Having registered the trademark in 1992 and gained a following in the years after, Martin had ample experience defending his brand against companies trying to cash in on Black Pearl's strong reputation.
"We have had up to seven to 10 infringements in the last 20 years," Martin said. The list includes Panda Express, an Asian-style fast food business that is a mainstay in US airports and food courts, he said. The Panda Express conflict was a little "more difficult" than the others to settle, but Martin was able to do so without legal action. In fact, he had never gone after a company in court until IMB. What was different this time?
"Basically it was their refusal to stop," Martin said. In response to letters Martin International sent asking them to stop using the trademark, "They said well, no, we're right -- they granted us use of the mark so we're right."
United States Senior District Court Judge Maurice Cohill did not agree. On Dec. 20, he ordered IMB to "change all packaging, labeling, marketing materials, order forms and other forms of business documents and invoices to remove, destroy or delete any use of the combined terms 'Black Pearl,'" court documents from the US District Court for the Western District in Pennsylvania, which IntraFish obtained, said.
Martin had allowed the company use of the right to use the Black Pearl brand name when selling the Black Pearl seafood -- sold to them by Martin International -- but not to reapply that name to its other products. IMB had allegedly reapplied it to pork.
Martin International did not make back the money it spent in legal fees on the payout money it received from IMB, but Martin deems the process well worth the four year legal battle.
"It is good -- halfway in you realize how much money you're spending, and you have to say 'is this worth it?' And it is worth it," Martin said. "Part of the value of the mark is enhanced by virtue of prevailing in a federal law suit..."
Although the judge did not grant Black Pearl the injunctive relief -- or reimbursement of legal fees -- it asked for, he did order IMB not to use the words Black and Pearl together in that order on any of its products.

Good enough...for good reason
How Martin played the legal game
Martin originally hoped to recover the company's legal fees for the case entirely through the lawsuit, and although the outcome fell short of that target, he did reach his ultimate goal of defending the Black Pearl trademark. That defense is more valuable than one might think.
A victory in federal court makes the trademark more likely to defend itself against companies trying to use it in the future.
The secret, says Martin, is "if you submit an application and they grant you the use of that mark, that does not mean that if you come into an infringement, they will automatically defend you," Martin said. "The patent and trademark office is not the final word."
Although the Black Pearl Seafood trademark is registered in 14 countries, it still had to prove in court that it was, in fact, a strong "defensable" trademark.
According to Franchise Law Solutions, trademarks must pass some of the "Lapp test" factors. There are ten of them, including the strength of the owner's trademark. If a trademark has won a federal case in the past, it is more likely to be considered strong, said Martin.
Black Pearl Seafood passed seven of the 10 lap test factors, Martin said. It did not, however, pass the strength test. Perhaps next time it will.

Black Pearl wins trademark war in US District Court