Need Supply Company’s retail store at 3100 W. Cary St. Photo by Michael Schwartz.
A four-letter word is at the root of a recent lawsuit involving a popular Richmond retailer.
NSCO LLC, which operates well-known Carytown store Need Supply Co., is suing Dallas-based retailer Need LLC for wrongfully using its trademark to promote its website, clothing and accessories, alleging trademark infringement, cyberpiracy and other claims.
The dispute, filed Nov. 19 in Richmond federal court, boils down simply to the use of the word “need.”
Need Supply says in its suit that it has a registered trademark on “Need Supply, a common law trademark on the word ‘Need’ and has a pending federal trademark application for ‘Need,’ as it pertains to identifying clothing.”
Need, the Texas company, was founded in 2013 and operates a website it describes as “a refined retailer and lifestyle publication for the modern gentleman.”
Read the lawsuit (PDF)
Need Supply says in its lawsuit it first learned of the Dallas company’s website in June 2013. It states that the defendant initially marketed itself as “Need Lifestyle” but now simply goes by the name “Need.”
It also claims that the companies’ web addresses are similar, as are their product offerings.
“Many of the items offered by the defendant’s infringing website are not only similar to Need’s products, at various times, defendant has promoted and sold the exact same brands Need offers on its website,” Need Supply claims in the lawsuit.
Need Supply opened in Richmond in 1999. The company, owned by Chris Bossola and Gabriel Ricioppo, eventually branched out with an online store that has since helped fuel impressive growth. The company landed on Inc. magazine’s list of the nation’s fastest-growing companies in 2013. And earlier this year, Need Supply announced its expansion plans for stores in Asia.
The company’s brand, it argues, “has now become the ‘Need’ brand, conveying style, design, and innovation,” the company argues in its suit. “As a result, Need and the mark have garnered substantial unsolicited publicity and are widely recognized and well-regarded for their success.”
Need Supply says in its suit that it has twice issued cease and desist letters to Need CEO Matt Alexander prior to filing the lawsuit.
It claims the Texas company is intentionally trying to trade on the goodwill of Need Supply and is causing consumer confusion and irreparable injury to Need Supply. The lawsuit claims six counts including various forms of trademark infringement, unfair competition and violations of the Anticybersquatting Consumer Protection Act.
Need Supply is seeking to permanently prevent the defendant and its employees from using anything related to the “Need” trademark in question, including operating a website with the word “need” in the domain name. It also calls for all mentions of www.neededition.com to be removed from the Internet.
It asks for an unspecified amount of damages or to recover three times the defendant’s profits made as a result of its alleged wrongdoings, whichever is greater.
“NL’s attempt to benefit from Need’s commercial success poses imminent and irreparable harm to both Need and the public,” the suit claims.
Need, according to its website, operates with a sister brand called Foremost, and both are part of another entity known as the Edition Collective.
The company did not respond to an email sent last week seeking comment.
A message left for Bossola and Ricioppo was not returned by press time. Their attorneys in the case are Edward White, Stephen Faraci and Janet Cho of LeClairRyan. They did not respond to requests for comment.
This isn’t the first time that a single word landed a Richmond company in a court battle. Henrico County-based Strangeways Brewing got into a trademark dispute over the word “strange” a couple of years ago.
That case resulted in a settlement and a special batch of beer.
Need Supply Company’s retail store at 3100 W. Cary St. Photo by Michael Schwartz.
A four-letter word is at the root of a recent lawsuit involving a popular Richmond retailer.
NSCO LLC, which operates well-known Carytown store Need Supply Co., is suing Dallas-based retailer Need LLC for wrongfully using its trademark to promote its website, clothing and accessories, alleging trademark infringement, cyberpiracy and other claims.
The dispute, filed Nov. 19 in Richmond federal court, boils down simply to the use of the word “need.”
Need Supply says in its suit that it has a registered trademark on “Need Supply, a common law trademark on the word ‘Need’ and has a pending federal trademark application for ‘Need,’ as it pertains to identifying clothing.”
Need, the Texas company, was founded in 2013 and operates a website it describes as “a refined retailer and lifestyle publication for the modern gentleman.”
Read the lawsuit (PDF)
Need Supply says in its lawsuit it first learned of the Dallas company’s website in June 2013. It states that the defendant initially marketed itself as “Need Lifestyle” but now simply goes by the name “Need.”
It also claims that the companies’ web addresses are similar, as are their product offerings.
“Many of the items offered by the defendant’s infringing website are not only similar to Need’s products, at various times, defendant has promoted and sold the exact same brands Need offers on its website,” Need Supply claims in the lawsuit.
Need Supply opened in Richmond in 1999. The company, owned by Chris Bossola and Gabriel Ricioppo, eventually branched out with an online store that has since helped fuel impressive growth. The company landed on Inc. magazine’s list of the nation’s fastest-growing companies in 2013. And earlier this year, Need Supply announced its expansion plans for stores in Asia.
The company’s brand, it argues, “has now become the ‘Need’ brand, conveying style, design, and innovation,” the company argues in its suit. “As a result, Need and the mark have garnered substantial unsolicited publicity and are widely recognized and well-regarded for their success.”
Need Supply says in its suit that it has twice issued cease and desist letters to Need CEO Matt Alexander prior to filing the lawsuit.
It claims the Texas company is intentionally trying to trade on the goodwill of Need Supply and is causing consumer confusion and irreparable injury to Need Supply. The lawsuit claims six counts including various forms of trademark infringement, unfair competition and violations of the Anticybersquatting Consumer Protection Act.
Need Supply is seeking to permanently prevent the defendant and its employees from using anything related to the “Need” trademark in question, including operating a website with the word “need” in the domain name. It also calls for all mentions of www.neededition.com to be removed from the Internet.
It asks for an unspecified amount of damages or to recover three times the defendant’s profits made as a result of its alleged wrongdoings, whichever is greater.
“NL’s attempt to benefit from Need’s commercial success poses imminent and irreparable harm to both Need and the public,” the suit claims.
Need, according to its website, operates with a sister brand called Foremost, and both are part of another entity known as the Edition Collective.
The company did not respond to an email sent last week seeking comment.
A message left for Bossola and Ricioppo was not returned by press time. Their attorneys in the case are Edward White, Stephen Faraci and Janet Cho of LeClairRyan. They did not respond to requests for comment.
This isn’t the first time that a single word landed a Richmond company in a court battle. Henrico County-based Strangeways Brewing got into a trademark dispute over the word “strange” a couple of years ago.
That case resulted in a settlement and a special batch of beer.