On March 29, action sports apparel giant Volcom filed a civil suit against Roc Nation, the management company of artist and entertainer Jay Z, for trademark infringement and unfair competition involving Volcom's long-held stone mark design. While both are named as Delaware-based corporations, the suit was filed in California's Central District court due to the extensive business both companies conduct in California.
The official complaint alleges that "Roc Nation began to use the inverted diamond logo in connection with goods and services that compete directly with goods and services offered by Volcom." Volcom first introduced its emblem in 1991 and several varieties of the insignia are registered with the United States Patent and Trademark Office.
Volcom is seeking a jury trial to settle the dispute. Attempts to reach Roc Nation for comment were unsuccessful. And a spokesman for Volcom declined to comment, providing instead the company's formal statement on the matter: "Volcom believes the merits of its case are clearly set forth in the complaint against Roc Nation, and we intend to vigorously defend our position to protect our Volcom Stone trademark and intellectual property."
Roc Nation initially employed the similar logo accompanied with the words "Roc Nation," although it appears to now be using the diamond logo exclusively -- a charge Volcom says began in 2009. In the suit, Volcom acknowledges its primary customer base has "traditionally been those interested in skating, surfing, [and] snowboarding," but contends that, combined with its expansion into music and entertainment, the brand's "popularity has become more mainstream." As a result, the document states, "a likelihood of confusion among consumers" may occur.
Beginning in "August 2006, Volcom used its stone mark in connection with the marketing and sales of electronics in International Class 9, namely headphones," the complaint reads. Specifically, the court document highlights both Volcom and Roc Nation's branding of products with manufacturer Skullcandy. Volcom claims that consumers may mistake its collaborative Skullcandy products for those of Roc Nation.
The complaint cites instances where Roc Nation headphones "are sold in several of the same channels of trade as Volcom sells its products featuring the stone mark, including through retailers such as Surfside Sports (both online [and] at [the] store), Zappos.com, Zumiez, and Dogfunk.com."
Roc Nation has also advertised in some of the same nationally distributed publications as Volcom, identifying action sports and culture titles BL!SSS, Surfing Magazine, and Transworld Surf, in particular.
Volcom says it notified Roc Nation about the infringement, but Roc Nation refused to halt using the logo and that the infraction is willful. Volcom claims to have invested over a hundred million dollars in establishing and managing its brand and that Roc Nation's infringement of the trademark has "irreparably injured Volcom in an amount not yet ascertained but in an amount to be determined."
The damages sought by Volcom include prohibiting Roc Nation from continued use of the inverted diamond emblem on sale items and advertising; that all "signs, prints, packages, wrappers, receptacles, advertisements and other goods in [Roc Nation's] possession" bearing the logo be destroyed; as well as pay costs associated with "corrective advertising" and lost profits.