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ITA Helps U.S. Sporting Goods Manufacturer Regain Ownership of its Trademark in Russia

Wednesday, July 10, 2013

(ITA)  The International Trade Administration’s (ITA) helped Johnson Outdoors, an outdoor recreational equipment manufacturer based in Racine, Wisconsin, regain ownership of its trademark in Russia, which enabled the Company to sustain $100 million in annual revenue for its flagship Minn Kota brand.

Why it Matters
At risk for Johnson Outdoors was millions of dollars in sales and the poterntial loss of hundreds of American jobs when a Russian competitor registered Johnson Outdoors’ Minn Kota trademark. Johnson’s Congressional representative informed ITA of this matter and it worked quickly to help Johnson Outdoors regain rightful ownership of its trademark in Russia. This allowed the company to continue selling in the Russian market.

The Problem
Johnson Outdoors, a manufacturer of equipment for fishing, diving, paddling and camping had been selling its products in Russia for many years. In 2010, a Russian competitor, JJ Group, registered the Johnson Outdoors’ Minn Kota trademark with Russia’s patent office, the Federal Service for Intellectual Property, without authorization from Johnson Outdoors. JJ Group attempted to sue Johnson Outdoors for alleged violation of the trademark and then offered to drop the suit and sell the rights to Johnson Outdoors for tens of thousands of dollars. Johnson Outdoors’ legal counsel worked to obtain a cancellation order for JJ Group’s trademark registration without success. In August 2011, Johnson Outdoors turned to ITA for assistance.

The Solution
ITA, the U.S. Patent and Trademark Office, Office of the U.S. Trade Representative, and the U.S. Department of State all worked to resolve this issue. In December 2011, ITA arranged for a senior U.S. Government official to call officials at Russia’s Federal Service for Intellectual Property to express interest in proper protection of IPR. The conversation produced results and in January 2012, the Russian company dropped its suit against Johnson Outdoors and relinquished the trademark – at no cost to Johnson Outdoors. Johnson Outdoors believes ITA intervention is what lead to the resolution of its trademark dispute. The company is now the rightful owner of its trademark in Russia and is pleased that it continues to enjoy access to the Russian market.

Working closely with U.S. companies, MAC creates, expands and defends market access for U.S. goods and services overseas through the Trade Agreements Compliance Program. “We promote policy that develops a more favorable business climate for U.S. companies in global markets; we employ commercial diplomacy to resolve trade barriers; and we leverage our bilateral and multilateral trade agreements to ensure our trading partners live up to their commitments so that our businesses can compete on a level-playing field.” - Assistant Secretary of Commerce for Market Access and Compliance, Michael C. Camuñez.