The Seventh Circuit Court of Appeals recently determined that a mark much like the iconic Red Cross emblem is protectable and, as such, determined that Southern Illinois Storm Shelters, Inc. had infringed on the plaintiff’s trademark. The damages, $17 million. There are two lessons from this case. First, do not exceed the scope of your license. Second, sometimes small differences in marks have large effects on outcomes.

Southern Illinois Storm Shelters received a limited license to use the plaintiffs “Life Savor Storm Shelter.” The license was limited to Southern Illinois. Yet the defendant used the mark on products it sold throughout the United States. It got caught. The agreement being breached, the plaintiff sued. But it did not claim only breach of contract. It also claimed trademark infringement.

Having been caught, Southern Illinois Storm Shelters did not claim it did not exceed the scope of the license. Rather, it claimed the mark it improperly used was too similar to the Red Cross emblem. The Red Cross emblem is not protectable as a trademark. The Seventh Circuit disposed of this argument, deciding the mark was in a different color and had wording rendering it different than the Red Cross emblem. The Court rejected the defendant’s other arguments as well.

Affirming the trial court’s decision that the mark was infringed and the defenses unavailing, the Court then reversed the trial court’s rejection of attorneys’ fees for the plaintiff. The Seventh Circuit determined the record, based on Southern Illinois Storm Shelters’ large-scale campaign and its behavior being willful, malicious, and in bad faith, required the trial court to award fees to plaintiff.

4SEMO.com Incorporated v. Southern Illinois Storm Shelters, Inc., et al.