Sears Roebuck and Co. and one of its companies have filed suit in U.S. District Court in Chicago against a Georgia online company for selling a sexual enhancement product marketed under the “DieHard” brand name.
Sears and KCD IP LLC, an affiliate of Sears which owns trademark rights to “DieHard,” charge that RockHard Laboratories LLC and RockHard Laboratories Holdings LLC infringed on its trademark and caused its reputation to suffer from the online marketing of RockHard’s topical desensitizing spray.
Sears’ suit, filed Wednesday in federal court, said the DieHard name, which is used on vehicle batteries, auto parts and services, clothing and race promotional activities, was first registered as a trademark in 1992. In 1997, Sears and KCD registered several Internet domain names using the word ‘DieHard.’
In February 2010, the suit alleges, RockHard registered the domain name diehardspray.com and sought to trademark the phrase ‘Die Hard. Live it. Love it. Own it,” the suit states. Sears complained and while RockHard abandoned the trademark application and said it would stop using the “Diehard” trademark, it has continued to do so.
RockHard’s continued use of DieHard “in connection with a ‘numbing agent for male genitalia,’ has diminished, blurred, and tarnished, and will likely continue to diminish, blur, and tarnish Sears famous DieHard marks. For example, defendants’ advertisements on their website have shown a partially naked woman laying on top of the word DieHard,” the suit states.
In an emailed statement, a spokesman for RockHard said the company “takes intellectual property concerns very seriously, and we are reviewing the complaints made by Sears. RockHard Laboratories will offer additional comment once its had the opportunity to thoroughly investigate the matter.”
Sears, which has asked for a jury trial, is seeking to have RockHard end its use of the ‘DieHard’ name, turn over its Internet domain name and pay damages and the cost of an ad campaign to correct any damage to the DieHard brand reputation.
A spokesman for Sears said the retailer does not comment on pending litigation. Efforts to reach RockHard, of Alpharetta, Ga., were unsuccessful.