According to the complaint, the SOLINGEN® mark was first used approximately 150 years ago. SOLINGEN® is a registered mark in the United States, which certifies not only geographic origin of the cutlery for which it is used, but also that the cutlery comports with statutory standards of high quality manufacture. To put a “finer point” on it, SOLINGEN® knives are even protected by the “Solingen Decree”, a German law prohibiting anyone selling cutlery not made in Solingen, Germany, but implying that it is.
“Cutting to the quick”, the Complaint alleges that Defendants distribute counterfeit cutlery marked “SOLINGEN” that is made in China, and that they even overtly say so. Picture this: The Chamber has claimed not only that the Defendants have created a likelihood of consumer confusion as to the source of their knives, but that they also cause dilute the Chamber’s rights by “tarnishment.” The Complaint cites examples of consumers stating that the knives at issue are rusting or breaking in half. The public, it appears, is particularly disappointed in the famous chef Emeril, known for his exclamation “BAM!” while cooking on his show. Martha comes in for her share of blame, according to the Complaint, for claiming that her knives truly hail from Solingen, and making a video stating that she has “been using these knives forever.”
Trademark counterfeiting, if proved, can be a “dicey” proposition for a defendant, because statutory damages may be available. In this case, the Chamber is seeking treble damages or, alternatively, up to $2 million for each time Defendants have willfully counterfeited and infringed the SOLINGEN® mark. So, any way you slice it, trademark counterfeiting, if shown, can be a costly mistake for the defendant.