LOS ANGELES — Two of the top bondage manufacturers and retailers in the sex toy and novelty industry are in a legal war over words.
The battle has escalated into the federal courtroom, with claims and counterclaims focusing on a trademarked phrase — “Under the Bed Restraint System” — used to describe Sportsheets International Inc.’s bondage gear.
Sportsheets, which registered the “Under the Bed Restraint System,” phrase with the U.S. Patent and Trademark Office in 2015, filed a suit this past summer against The Stockroom Inc., accusing the rival of using the “Under Bed” descriptor with its products
Sportsheets, in the suit, said that The Stockroom willfully infringed on the trademark in claims seeking a restraining order, unspecified damages and destruction of all products bearing the similar phrase.
But shortly after the initial suit was filed, legal counsel for The Stockroom shot back and promptly filed a counterclaim, saying that the trademark claims were "frivolous."
The Stockroom, in court papers, asked a federal judge to cancel Sportsheets' trademarked phrase — U.S. Registration No. 4,669,665 — by ruling that it is a generic mark.
Sportsheets trademark for “Under the Bed Restraint System” is described as "sexual aids for enhancement of sexual pleasure and performance, namely, fabric wrist-cuffs and fabric ankle cuffs with small metal attachments, and fabric anchors with small metal attachments, all for use alone or in combination with other devices for sexual positioning and role playing."
The Stockroom’s counterclaims said that its KinkLab BedSpread Under Bed Bondage Strap is the focus of the complaint and that it sold the product prior to the date that Sportsheets applied for its trademark registration.
Further, The Stockroom said that its KinkLab BedSpread Under Bed Bondage Straps and Sportsheet’s Under the Bed Restraint System “are so dissimilar in their respective names, packaging, branding and commercial impression that there is no reasonable likelihood of confusion.”
To complicate matters, according to the counterclaim, The Stockroom said that it earlier entered into an oral agreement with Sportsheets that allowed Stockroom to change the name of its product without any liability if Sportsheets would permit it to sell through its remaining inventory.
According to the counterclaim, Sportsheets agreed to The Stockroom’s offer but later filed a lawsuit anyway.
“The Stockroom was in the process of selling through its inventory and in all ways complied with its contractual obligations with Sportsheets,” The Stockroom’s counterclaim said. “It did not reorder packaging under its BedSpread mark and undertook at substantial and unnecessary expense the rebranding of its BedSpread product.
In response to the suit and countersuit, Julie Stewart, president of Huntington Beach, Calif.-based Sportsheets International Inc., told XBIZ that she can’t comment on pending litigation, “except to say that it is unfortunate that Sportsheets has been forced to resort to our courts to protect our intellectual property.”
“U.S law requires Sportsheets to vigorously enforce our trademark rights against all infringers — even customers — to safeguard our federally registered trademarks for our best-selling brands and products,” Stewart said.
Joel Tucker, founder and CEO of The Stockroom Inc. of Los Angeles, called Sportsheets’s decision to pursue the suit “over-reaching and misguided.”
“If this matter goes to trial, The Stockroom expects to prevail,” Tucker told XBIZ.
“Despite Sportsheets’s statement that they were ‘forced’ to take this action, from my perspective they had a considerable range of different — and better — options for pursuing their goals,” Tucker said. “Heretofore, The Stockroom and Sportsheets have always enjoyed reasonably friendly relations as far as I knew, and in fact we have been a supporter of their company and brand and have carried their products for more than 15 years.
“Sometimes disagreements can break out between friends, and subsequently they can patch things up and move on as friends again,” Tucker said. “I don’t know if that will happen in this case, but there may still be some hope for a friendlier outcome.”