Whose DTC Is it Anyway?
A turf fight over the DTC trademark
Everyone knows DTC. Its Diarama Trading Co., based in New York City. Surprised? Were you thinking De Beers Diamond Trading Co.?
In either case, you would be correct. The famous diamond company in London gets a lot of publicity and media coverage, so it may come more easily to mind. But Diarama Trading Co. says it owns the DTC trademark (Reg. No. 2,290,927) in the United States. Now use of the DTC name has pitted one DTC against the other in a David vs. Goliath struggle.
Amish Gandhi, president of the Diarama Trading Co., filed a complaint against De Beers in U.S. District Court, Southern District of New York, to state his case.
De Beers introduced the Diamond Trading Co. and its acronym, DTC, in 1934. Subsequently, it began to use the name Central Selling Organisation, or CSO. CSO became the name people in the industry knew as the De Beers entity that bought, sorted, evaluated and marketed diamonds. Following De Beers strategic review and the unveiling of its new Supplier of Choice strategy in 2000, the company resurrected the DTC name to replace CSO as its marketing organizations name.
However, Diarama Trading Co. says it has been using the DTC name in the U.S. since 1997 and, in November 1999, registered it as a trademark with the U.S. Patent and Trademark Office.
By itself, that may seem innocuous enough. After all, Gandhi had no way of knowing in 1999 that De Beers would revive its use of the name in 2000. In fact, use of the acronym DTC is plentiful the world over. A quick Google search turns up more than a dozen pages of companies using the DTC acronym in industries ranging from information transformation to pharmaceuticals and travel agencies.
But these two DTCs are in the jewelry business, which complicates the issue. Diarama Trading Co. says that before De Beers introduced its use of DTC as its public name, Diarama had marketed and sold thousands of jewelry items with its own DTC marks. It also owns the domain name www.dtc-diamonds.com. The jewelry company says its clients have come to recognize the mark and to identify it with Diarama.
Diarama also alleges De Beers may have known about Diaramas DTC mark and, through a subsidiary, Decision Strategies, tried to buy the DTC mark from Diarama.
A court document provided to Professional Jeweler states this strategy failed: When plaintiff refused to sell its mark to Decision Strategies Inc., negotiations directly followed with representatives of De Beers, namely the law firm of Shearman & Sterling
representing De Beers Consolidated Mines. After protracted negotiations, plaintiff ultimately refused all offers to purchase the DTC mark.
The Diamond Trading Co. declined to comment on the case, citing on-going litigation.
Diarama Trading Co. says its cause of legal action arises under federal trademark infringement law. The complaint alleges De Beers use of the DTC mark constitutes willful and intentional infringement of Diaramas DTC trademark.
Gandhi says he plans to seek an injunction to stop De Beers from using the mark. He expects discovery, the formal information-gathering process in preparation for trial, to be completed by early 2004.
by Robert Weldon, G.G.