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LA-Z-BOY and American Woodmark Raise Legal Fuss for Collection Names.

RICHMOND, June 1, 2009 -- A dispute between recliner giant La-Z-Boy and kitchen and bath cabinet manufacturer American Woodmark has escalated into a federal lawsuit over the names of their various product collections.

The complaint was filed by Winchester, VA's American Woodmark Corporation in the U.S. District Court for the Eastern District of Virginia and is the culmination of an ongoing disagreement over the trademarks used for the various product lines of the parties.

Typically, the first party to use a mark has the superior claim of ownership and may exclude others from using a confusingly similar trademark subsequently. The first user is said to have priority over subsequent users.

In 1997, American Woodmark marketed cabinetry under the mark GROVE which was subsequently expanded to include MAPLE GROVE, HICKORY GROVE, OAK GROVE and ARTIC GROVE which is referred to as the "Grove Family" of marks.

American Woodmark filed an intent-to-use application with the United States Patent & Trademark Office (USPTO) to register the trademark CHERRY GROVE on September 21, 2007. The USPTO initially refused to register the mark because it was deemed confusingly similar to the trademark CHERRY GROVE registered by Ladd Furniture (who first used the mark in 1960) in connection with furniture and is currently owned by La-Z-Boy.

Despite the refusal, American Woodmark began using the mark CHERRY GROVE in January, 2008 in connection with cabinetry, likely reasoning their product was sufficiently different from the household furnishings offered by the defendants under the CHERRY GROVE trademark. Later in October of 2008, American Woodmark approached La-Z-Boy to gain their consent to the federal registration of CHERRY GROVE in connection with cabinetry. La-Z-Boy refused and demanded the cessation of American Woodmark's use of he mark citing potential consumer confusion.

Ironically, American Woodmark has registrations on file with the USPTO for the marks DEVON, TACOMA, DESIGNER'S CHOICE, and CHARLESTON. The legal papers filed by American Woodmark accuse La-Z-Boy of using these marks in connection with furniture.

American Woodmark is asking the federal court to declare their use CHERRY GROVE in connection with cabinetry will not cause consumer confusion in light of La-Z-Boy's use of the mark in connection with furniture; and therefore, does not constitute trademark infringement. Alternatively, American Woodmark has asked the court to determine that La-Z-Boy's use of DEVON, TACOMA, DESIGNER'S CHOICE, and CHARLESTON in connection with furniture infringes American Woodmark's registered trademarks in connection with cabinetry.

Typically, the first party to use a mark has the superior claim of ownership and may exclude others from using a confusingly similar trademark subsequently. The first user is said to have priority over subsequent users.



Notables.
News. LA-Z-BOY and American Woodmark Raise Legal Fuss for Collection Names. RICHMOND, June 1, 2009 -- A dispute between recliner giant La-Z-Boy and kitchen and bath cabinet manufacturer American Woodmark has escalated into a federal lawsuit over the names of their various product collections. The complaint was filed by Winchester, VA's American Woodmark Corporation in the U.S. District Court for the Eastern District of Virginia and is the culmination of an ongoing disagreement over the trademarks used for the various product lines of the parties. Typically, the first party to use a mark has the superior claim of ownership and may exclude others from using a confusingly similar trademark subsequently. The first user is said to have priority over subsequent users. In 1997, American Woodmark marketed cabinetry under the mark GROVE which was subsequently expanded to include MAPLE GROVE, HICKORY GROVE, OAK GROVE and ARTIC GROVE which is referred to as the "Grove Family" of marks. American Woodmark filed an intent-to-use application with the United States Patent & Trademark Office (USPTO) to register the trademark CHERRY GROVE on September 21, 2007. The USPTO initially refused to register the mark because it was deemed confusingly similar to the trademark CHERRY GROVE registered by Ladd Furniture (who first used the mark in 1960) in connection with furniture and is currently owned by La-Z-Boy. Despite the refusal, American Woodmark began using the mark CHERRY GROVE in January, 2008 in connection with cabinetry, likely reasoning their product was sufficiently different from the household furnishings offered by the defendants under the CHERRY GROVE trademark. Later in October of 2008, American Woodmark approached La-Z-Boy to gain their consent to the federal registration of CHERRY GROVE in connection with cabinetry. La-Z-Boy refused and demanded the cessation of American Woodmark's use of he mark citing potential consumer confusion. Ironically, American Woodmark has registrations on file with the USPTO for the marks DEVON, TACOMA, DESIGNER'S CHOICE, and CHARLESTON. The legal papers filed by American Woodmark accuse La-Z-Boy of using these marks in connection with furniture. American Woodmark is asking the federal court to declare their use CHERRY GROVE in connection with cabinetry will not cause consumer confusion in light of La-Z-Boy's use of the mark in connection with furniture; and therefore, does not constitute trademark infringement. Alternatively, American Woodmark has asked the court to determine that La-Z-Boy's use of DEVON, TACOMA, DESIGNER'S CHOICE, and CHARLESTON in connection with furniture infringes American Woodmark's registered trademarks in connection with cabinetry. Typically, the first party to use a mark has the superior claim of ownership and may exclude others from using a confusingly similar trademark subsequently. The first user is said to have priority over subsequent users.
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