On Monday, T-Mobile US Inc. filed a complaint in the Western District of Washington against Simply Wireless Inc. for purported trademark infringement of T-Mobile’s trade name and trademarks by claiming a partnership between the parties, despite the parties not currently having a business relationship.
In particular, T-Mobile claimed that simply Wireless is using the “T-Mobile trade name and trademarks in connection with the offer for sale, sale and distribution not authorized or sold by T-Mobile.” Wireless service provider T-Mobile noted that it is a subsidiary of Deutsche Telekom AG (DTAG), which owns the “standard character T-MOBILE and a stylized T-Mobile Mark (collectively, the ‘T-Mobile Marks’).” T-Mobile was granted exclusive licensing and enforcement rights to the T-Mobile marks, according to the complaint. Moreover, only T-Mobile and authorized sublicensees are allowed to use the T-Mobile marks.
The plaintiff alleged that it has invested in developing and maintaining its reputation and that of the brand. Furthermore, T-Mobile contended that the T-Mobile marks and name “have become an intrinsic and essential part of the valuable goodwill and property of T-Mobile.” T-Mobile asserted that the T-Mobile marks are well-established, famous and highly recognized by consumers and that they are “valid, distinctive, protectable, have acquired secondary meaning, and are closely associated with T-Mobile in the United States.”
According to the complaint, T-Mobile and Simply Wireless engaged in two business relationships. Reportedly, from 2003-2009, Simply Wireless was an authorized T-Mobile devices and services dealer, pursuant to their dealer agreements. Accordingly, during the parties’ relationship, “Simply Wireless engaged in co-operative advertising with T-Mobile. T-Mobile noted that from July 12, 2012 to June 30, 2015, the parties were in a “Limited Purpose Co-Marketing and Distribution Agreement for Prepay Equipment Sold through HSN and QVC (‘HSN Agreement’).” Their relationship was primarily conducted through the dealer agreements regarding their 2002-2009 relationship or the HSN agreement. T-Mobile stated that the defendant previously acknowledged T-Mobile’s trademarks and rights.
T-Mobile averred that a section of Simply Wireless’s website lists partners and their trademarks, including T-Mobile’s trademark. T-Mobile claimed that as part of their previous business relationships, Simply Wireless was granted a limited license to use the T-Mobile Marks, but, according to T-Mobile, these sublicenses have expired, so Simply Wireless “has no right or authority to utilize the T-Mobile Marks.” Moreover, T-Mobile proffered that it is not a Simply Wireless partner and the defendant does not have the authority to represent itself as a partner. Nevertheless, T-Mobile alleged that Simply Wireless continues to represent to the public via its website that there is a partnership between the parties despite the fact that none currently exist; thus, Simply Wireless is purportedly “utilizing the T-Mobile Marks to sell and advertise its goods and services.”
Simply Wireless is accused of violating the Lanham Act and Washington Consumer Protection Act.
T-Mobile seeks an order to halt the defendant’s use of the T-Mobile marks; an award for damages, costs, and fees; and other relief. T-Mobile is represented by Polsinelli P.C.
