Oldcastle Files ‘Building Envelope’ Case
THURSDAY, JUNE 18, 2015
DALLAS--A leading supplier of walls, windows and other building-envelope products has filed suit to protect its company name, which is built on the common term for architectural enclosures.
In a trademark infringement lawsuit filed in U.S. District Court for the Northern District of Texas, OldCastle BuildingEnvelope Inc., of Dallas, accuses BNP Media II LLC, of Troy, MI, of creating and using a copycat version of OldCastle's trade name.
BNP Media, which publishes more than 90 publications for various industries, has not yet responded to the complaint, filed May 22. BNP has filed an extension with the court.
Using of the Marks’
Oldcastle alleges unauthorized use of the trade names “OLDCASTLE BUILDINGENVELOPE, OLDCASTLE BE and BUILDINGENVELOPE, OLDCASTLE BUILDINGENVELOPE®, PUSHING THE BUILDING ENVELOPE®, and THE BUILDING ENVELOPE COMPANY™,” collectively called “the Marks.”
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Oldcastle BuildingEnvelope alleges that BNP Media created a copycat version of the company’s trade name and published it in newsletters, magazines and other publications. |
The company says it registered and began using its Marks in 2008.
Oldcastle BuildingEnvelope supplies products designed to close the building envelope (i.e. the physical separator between the interior and exterior of a building), including doors, storefront systems, cladding and other materials.
The company also bills itself as an educator of architects, building consultants, engineers and contractors by offering resources, white papers, continuing education units, and other publications for these professionals.
BNP Media is a fourth-generation family-run publishing company. The company’s portfolio includes business-to-business publications, research, digital products and events. Building Envelope magazine is one of its titles.
Marketing Campaigns
“Using the Marks, [Oldcastle BuildingEnvelope] has expended substantial time, effort and capital in promoting and establishing its business and related products and services,” according to the complaint.
The company says it has spent more than $19 million for branded advertisements since 2009. Sales of its branded products and services have “exceeded approximately $1 billion annually in the United States from 2010 to the present,” the complaint says.
The company adopted a light green/dark green color scheme to use on materials and products sold and promoted throughout the U.S. building and design industry, according to the complaint.
Infringement Allegations
In January 2015, Oldcastle alleges that BNP Media began using the Marks or “substantially similar names and marks in conjunction with the same or substantially similar online and print materials and publications […] and online CEU educational services.”
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Building Envelope magazine is a new title offered by BNP Media. |
According to the complaint, BNP also launched a website: www.buildingenvelopeonline.com.
Furthermore, BNP is using a contrasting green color scheme that is “nearly identical to the unique branding used by [Oldcastle],” the complaint says.
Further, BNP has “stacked the terms ‘Building’ and ‘Envelope’ and linked them with the letter ‘L’ in a style” similar to Oldcastle, the complaint reads.
‘Cease-and-desist’ Letters
Oldcastle claims that consumers are confused by BNP’s use of the Marks and that BNP is cutting into Oldcastle's business. The company has sent numerous cease-and-desist letters to the publisher, the complaint says.
BNP Media has responded that it would change the color scheme of its marks—BUILDING ENVELOPE, BE UNIVERSITY and BE—but it has not done so, Oldcastle claims.
In any case, Oldcastle says, a color change is not enough to differentiate the two brands.
BNP has also recently claimed exclusive rights to the word mark “BUILDING ENVELOPE” by filing a trademark application in March 2015.
Relief Requests
The suit seeks an injunction to stop continued use of the mark “Building Envelope” by any publications or CEU education services targeting the architectural, engineering and construction community.
The manufacturer also requests that the publisher stop using the similar color scheme and engage in “corrective advertising” or pay Oldcastle “an amount sufficient” for it to engage in corrective advertising.
Other demands include damages in an amount sufficient to compensate Oldcastle for its losses, actual damages or BNP’s profits.
Tagged categories: Building envelope; Building Envelope; Business matters; Cladding; Lawsuits; Waterproofing
