On Tuesday, ADT LLC and The ADT Security Corporation (together, ADT) filed a complaint in the Southern District of Florida alleging that Ring has infringed ADT’s iconic trademark – its “Famous Blue Octagon” – in the second legal challenge in which the companies have engaged.
According to the complaint, home security and automation technology provider ADT has used its trademark, its “Famous Blue Octagon,” for decades; it has purportedly “been a symbol of ADT’s dedication to its customers.” ADT’s Famous Blue Octagon can be displayed on a lawn sign or sticker on a street-facing window, as noted in the complaint. ADT proffered that its “Famous Blue Octagon makes customers feel safer, communicating to all who pass ADT’s reputation for trust, vigilance, and reliability.”
ADT noted that it previously worked with Ring, which is now owned by Amazon.com Inc.; however, ADT averred that “Ring has had a history of misappropriating ADT’s intellectual property.” Specifically, after working together in 2015 and offering Ring’s Video Doorbell to ADT’s consumers, among other things, Ring launched its own security system in early 2017 to compete with ADT, according to the complaint. Ring allegedly “misappropriated an unauthorized copy of the source code and documentation for a new home security and automation platform that ADT was developing with another young company, Zonoff.” Upon discovery, ADT reached out to Ring about this purported misappropriation. However, ADT stated that Ring continued to misappropriate its trade secrets, so it filed suit in Delaware’s Chancery Court, where it obtained injunctive relief. ADT also noted that it has had a business relationship with Amazon.
ADT contended that in addition to misappropriating its trade secrets, Ring also attempted to steal its “Famous Blue Octagon – seeking to tout a reputation for trust to potential customers that it has not earned.” Ring asserted that because of the likelihood of consumer confusion, a February 2016 Master Sales Agreement (ADT-Ring MSA) for the Ring Video Doorbell provides that Ring would “‘(i) not use or acquiesce in the use of any trademarks or trade names which are likely to be confusingly similar to the trademarks or trade names encompassed by ADT Intellectual Property; (ii) not knowingly unite, join or combine ADT Intellectual Property with any other symbols, names, or trademarks, except for marketing activities as contemplated by this Agreement… .” However, despite this agreement, Ring offered a yard sign that was allegedly confusingly similar to ADT’s Famous Blue Octagon. Ring’s purportedly infringing sign is shown below:
ADT added that it does not believe Ring used an octagon or blue octagon before this instance. According to the complaint, ADT reached out to Ring in August 2016 about the similarities to avoid infringement. After which, Ring changed its sign and removed some of the blue:
ADT stated that it was understood that Ring would undertake affirmative steps to avoid confusion between the entities. However, in February 2021, the ADT-Ring MSA was terminated; but, pursuant to the ADT-Amazon RSA, Amazon agreed not to infringe ADT’s trademarks.
Accordingly, ADT alleged that it was “surprised” to discover that in March 2021 “Ring had adopted a blue octagon mark (‘the Infringing Mark’) that is virtually indistinguishable from ADT’s Famous Blue Octagon for use in connection with Ring’s own security offerings.” ADT argued that Ring reverted on the previous color change and now copies and infringes ADT’s famous mark, as exemplified below:
According to ADT, Ring infringed its Famous Blue Octagon because of the high level of consumer recognition and association with the mark and ADT. Consequently, ADT contended that Ring “deployed the Infringing Mark under the assumption that people will believe that Ring is providing a security service on par with ADT – or, worse, that Ring is providing its security service in partnership with ADT.” As a result of the purported similarities, Ring is allegedly seeking to benefit from ADT’s earned goodwill and brand reputation. Therefore, this purported similarity is likely to cause consumer confusion and consumers are likely to falsely believe there is an affiliation, association, endorsement, or other connection between ADT and Ring, according to ADT.
The causes of action are trademark infringement in violation of the Lanham Act, unfair competition and false designation of origin in violation of the Lanham Act, common law trademark infringement, common law unfair competition, and trademark dilution under the Lanham Act and Florida law.
ADT seeks declaratory and injunctive relief; to preliminarily and permanently enjoin Ring from continuing its unlawful conduct by preventing it from using an infringing mark and removing all infringing materials; an award for monetary relief, damages, costs, and fees; and other relief.
ADT is represented by Shook, Hardy & Bacon L.L.P.
“Great brands like ADT don’t become universally recognized overnight,” Trent Webb, co-chair, intellectual property practice group of Shook, Hardy & Bacon, counsel for ADT, said in a press release. “ADT’s products, services, and reputation are built on a nearly 150-year history of innovation and reliability, and investment in its people and its products. Amazon’s Ring continues to take shortcuts to build its brand – to build its company – through blatant and repeated theft of ADT’s intellectual property.” Webb added, “ADT will protect its customers, its employees, its intellectual property, and its reputation.”
As of the time of publication, Ring had not responded to an email request for comment.