It’s been more than two years since Chase Baron and Sean Smith, co-founders of Lakewood roofing and construction company Skyyguard, found out they caught the attention of international liquor company Campari Group.
When they talk about their ongoing trademark litigation over their company’s logo and that of Campari’s Skyy Vodka brand, they’re still shocked that it actually happens.
“Obviously we thought it was ridiculous,” said Baron, the company’s CEO when he learned that Campari America had opposed the trademark filing he and Smith filed in January 2019, our federal registration for the design of our logo, which the Skyy Vodka brand would water down. Since that date we have been trying to find out how. How is that possible?”
Companies using a wide lens to interpret intellectual property law and get involved with smaller businesses are not a new phenomenon. Attorney Peter Lemire of Denver Intellectual Property Firm, Leyendecker & Lemire, blogged in 2011 about a case in which Chik-Fil-A mailed a Vermont artist a caution letter saying “Eat More Kale” shirts. The slogan was too similar to the fast food chain’s “Eat Mor Chikin” advertising campaign.
Lemire assumed that Chik-Fil-A would lose the case on his cause.
“In a trademark litigation, however, victory is not about who is legally right or wrong: it is about who is taller and who has deeper pockets,” wrote Lemire.
Baron and Smith say they’ll find out the hard way. Because of this, they have invested a great deal of time and energy making the public aware of their case, which is still weaving its way through the US Patent and Trademark Office process. A trial is due to resume in March.
Helen H. Richardson, The Denver Post
Skyyguard co-founders CEO Chase Baron (left) and COO Sean Smith (right) are pictured at a construction site in Denver on February 9, 2021.
Since last year, the two have been distributing a quote from a filing for which Smith sat with Sabina Vayner, a Campari America attorney at the law firm Greenberg Traurig LLP. Vayner asked Smith what he could do if he and Baron didn’t get the Skyyguard logo.
When he said he didn’t know, Vayner asked, “But are you ready to essentially bankrupt the company that has been struggling all the way?” shows a transcript of the September 2019 deposit.
“We already know the point is to take so much time and make us put so much money into legal fees that we literally can’t fight them anymore,” said Smith. “We’re not getting anywhere with them.”
Vayner was reached by email this week and said her company was not commenting on active customer issues. Attempts to contact Campari America representatives by email and through the Campari Group website resulted in no response.
Harry Surden, a law professor at the University of Colorado who specializes in intellectual property law, said companies are responsible for protecting or losing their trademarks. However, there are numerous examples of common words used in company logos and names in various industries where there is little risk of consumer confusion: Delta Airlines and Delta Dental Insurance for example.
Sean Smith and Chase Baron like the logo for their Skyyguard store because the two Ys look like holding hands and also form the shape of a house protected by the elements, a fitting image for a roofing company. When they tried to feature the logo design, they faced legal opposition from Skyy Vodka maker Campari Group.
But there are also overly aggressive companies looking to small businesses in unrelated areas, Surden said. These companies are sometimes referred to as “brand bullies”. He believes the Campari case against Skyyguard fits into that category.
“Skyyguard is in a completely different realm from Skyy Vodka (roofers vs. alcohol) and consumers are unlikely to be actually confused by believing Skyyguard is linked to Skyy Vodka,” Surden wrote in an E on Tuesday -Mail. “After all, ‘SKYY’ is a variant where a common word is misspelled – ‘heaven’. Personally, I think Campari / SKYY has a very weak case here. “
Baron and Smith would agree to the term “tyrant”. They found that Campari brought more than 160 cases against small businesses for trademarks, including other companies in the construction sector.
The two friends, who met aboard a submarine in the Navy in 2005, built their business on notoriety and reliability and chose to build a strong presence in Colorado rather than chasing storms across the country like some roofers.
Smith said some people asked him why Skyyguard didn’t just drop the second Y in his name to make Campari and his lawyers give in. For one thing, Skyguard is already registered as a trademark by another company, and for another, it would undo all of the work that was done to build Skyyguard’s social media and internet presence, the partners say.
The brand war had financial implications – Baron estimated the company invested more than $ 50,000 in litigation – and personal fees, the partners say. Both Baron and Smith were separated from their families who live outside of Colorado.
Even so, they are determined to hold out the dispute until the U.S. Trademark and Litigation Board of Appeal decides. They say Greenberg Sadly used deliberate stall tactics to keep the case from going to federal court.
“I promise if we could get it all on the table it would be resolved so quickly,” said Smith.
“But they don’t want that,” added Baron.