YETI Coolers believes that companies in the promotional products industry are infringing on its intellectual property rights through the selling of alleged knockoff drinkware products and related marketing that aims to cash in on the Austin, TX-based company’s legally protected designs, trademarks and trade dress rights.

While some suppliers have panned the allegations as baseless, others have elected to remove the alleged offending products from their offerings, rather than risk incurring legal action. Legal experts say the legalities surrounding YETI’s claims are complex, without it being immediately clear if a court would rule in favor of YETI if it came to a battle before a judge.

One thing is clear though: YETI isn’t afraid to slug it out in court. It has filed intellectual property suits against Walmart, Home Depot and others. Now, YETI wants the selling of alleged knockoff products, as well as marketing that it believes taps into its name/brand, to stop within the promo products space. “YETI vigorously protects its intellectual property rights and brand integrity by continuously monitoring the marketplace and defending its innovations,” YETI said through its attorney Louis DiSanto, of Chicago-based law firm Banner & Witcoff.

By letter, YETI recently notified ASI, Sage and DistributorCentral about the alleged infringing products and asked that they be removed from product search databases, DiSanto said. In a letter, DiSanto wrote that his client holds valuable design patents related to its Rambler Drinkware – patents that certain products available in the promo space are violating, according to YETI. He continued: “The near identical likeness of the infringing drinkware products to YETI’s Rambler Drinkware compels the conclusion that YETI’s Rambler Drinkware products were intentionally copied, and that the infringing drinkware products were designed to trade on YETI’s goodwill in the distinctive design of YETI’s 30-oz. Rambler Tumbler, 20-oz. Rambler Tumbler, 10-oz. Rambler Lowball, Rambler Colster Beverage Holder, 18-oz. Rambler Bottle, 36-oz. Rambler Bottle, and 64-oz. Rambler Bottle, and create confusion in the marketplace.”

Some suppliers aren’t buying that position, though. They say YETI is stretching with its claims, trying to assert control over product features that are broadly generic and essential to the functioning of items in question like travel tumblers. “When I look, for example, at YETI’s 20-oz., Rambler Tumbler, I see a straight up 20-oz. cup. How the heck can you patent that?” said a promo executive who spoke on condition of anonymity. “A cup is a cup. And when you talk about features like double-wall insulation, those have been around for a long time and are not exclusive to YETI.”

Other suppliers, meanwhile, aren’t interested in criticizing YETI’s claims or potentially entering into a legal fray. “CPS will always respond professionally to any patent question, and in this case, we have pulled our products from the SAGE and ASI databases in accordance with the recommendation based on these potential patent legal questions,” said Kippie Helzel, vice president of sales at CPS Keystone (asi/43051). Past instances of similar patent claims in the industry made pulling the products the prudent move. “The last big effort like this that I remember was when MagLite enforced their property rights to protect their flashlights, and that did cause disruption for many suppliers who were then obligated to make design changes to their flashlights,” Helzel said.

In further outlining YETI’s position, DiSanto wrote that products in the promo industry violate his client’s trade dress rights, which generally refer to characteristics of the visual appearance of a product or its packaging that signify the source of the product to consumers. To prove such a violation in court, YETI would need to show that “the trade dress is so distinctive that the public identifies YETI as being the source of the product containing those features; YETI’s products and the alleged infringers’ goods look so similar that there is a ‘likelihood of confusion’; and the trade dress is not functional in that the product would still work without those features,” said Vantage Apparel (asi/93390) National Sales Manager Mike Wilkos, who is also a licensed attorney in New York and New Jersey.

If it came to it in the promo industry, could YETI prove all that regarding trade dress rights? Wilkos said it’s a close call. He pointed to a case filed earlier this year in which YETI sued Home Depot and Takeya USA Corp. for selling confusingly similar products to those offered by YETI. In that case, said Wilkos, Takeya filed a motion to dismiss based, upon other things, the assertion that features of the YETI cups are functional and therefore not entitled to trade dress protection. Wilkos said it’s difficult to know how the case will ultimately be decided, but noted the motion highlights the complexity of trade dress claims and how, in cases like this, there is often a large gray area to be explored. “This could be lengthy litigation,” he said.

DiSanto also said YETI owns trademark rights on “YETI,” “RAMBLER,” “YETI RAMBLER” and other marks in connection with its Rambler Drinkware. The Texas company said it has used these and other marks throughout the U.S. in relation to the drinkware, leading consumers to associate the marks definitively with YETI products. And yet, products available in the promo industry are being marketed through web-based search terms like “YETI”, “RAMBLER”, and “YETI RAMBER” – a wrongful use that evidences unlawful trading on the goodwill of YETI’s intellectual property rights, wrote DiSanto.

While some suppliers contacted for this article bristled at the idea of being dictated to regarding search terms, veteran promo industry attorney Leeton Lee said it would be wise to avoid using any of YETI’s registered trademarks. Obviously, he said, the same goes for design patents.

Lee, founder of ComplyBox, a consulting company that advises promotional product businesses on product safety/compliance issues, said ad specialty firms should seek the advice of an intellectual property lawyer regarding products they plan to make or sell that can potentially infringe on patents, trademarks and copyrights. He said proceeding conservatively is often the best course of action in these matters as defending intellectual property infringement actions can be expensive and eat up a lot of time, energy and emotion. “If you’re facing a company like YETI that has deep pockets and a team of very aggressive and experienced lawyers,” said Lee, “you may be better off to pass on making or selling any similar products unless your own attorneys have done the proper searches and have blessed the product.”​