Entrepreneur Doing Business as ‘Soni’ Is Guilty of ‘Trademark Dilution,’ Says Sony
Sony is seeking a permanent injunction against a Florida entrepreneur on Lanham Act “trademark dilution” allegations for doing business under the names “Soni Interiors” and “SoniTex USA” without a Sony license, court documents show. “Defendant’s SONI Marks so closely resemble…
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Sony’s distinctive and famous SONY mark that they are likely to dilute the distinctive quality of the SONY mark,” said the complaint (in Pacer) Friday in U.S. District Court in Orlando. “The SONI portion of the SONI Marks is identical in pronunciation and nearly identical in appearance to the famous SONY mark,” it said. Consumers "are likely to pronounce 'SoniTex USA' as 'SONY-tex USA,' making it phonetically identical and highly similar to SONY in overall commercial impression," said the complaint. People also are likely to get the "false and misleading impression that 'SoniTex USA' is Sony’s U.S. textile, fabric, or furnishing unit," it said. Sony runs no such subsidiary in the U.S., emailed Sony America spokesperson Lisa Gephardt Monday. SoniTex is a manufacturer and wholesale distributor of kitchen cabinets, bathroom vanities, flooring materials and other home-improvement products, and sells them to the public through an affiliated Soni Interiors warehouse store in Sanford, Florida. Deep Soni, as the owner of both enterprises, applied at the Patent and Trademark Office six years ago to register those names as U.S. trademarks, said the complaint. Sony successfully blocked both applications before PTO’s Trademark Trial and Appeal Board (TTAB) on the same trademark-dilution grounds as in the complaint, it said. PTO records show the agency declared the applications dead in April 2015 and January 2016 after owner Soni let both lapse without meeting PTO's deadlines for challenging the TTAB's rulings. Roughly two dozen "valid and subsisting" registered trademarks are on file at PTO embedded with the Sony logo, said the complaint. "They constitute conclusive evidence of the validity of the registered mark, of Sony’s ownership of the mark, and of Sony’s exclusive right to use the registered mark in commerce." Though Sony doesn't object to "the fair use of ‘Soni’ as a last name, Defendant’s current use does not constitute fair use,” said the complaint. "Defendant seeks to derive a commercial benefit from the value and goodwill associated with the SONY mark," and "unless enjoined," will continue "its unlawful activities and continue to injure Sony," it said. Soni's representatives didn’t comment Monday.