HexClad is pushing way back against the trademark lawsuit that is being waged against it by Rolls-Royce. The quick catch-up is that Rolls-Royce filed a trademark infringement, dilution, and unfair competition case against HexClad in federal court in New Jersey this summer, taking issue with its use of advertising materials that refer to its cookware as “the Rolls Royce of pans.” According to Rolls-Royce’s complaint, by putting the Rolls-Royce-centric slogan – which is attributed to endorser Gordon Ramsay – at the center of its advertising materials, HexClad is causing it to suffer “ongoing and irreparable harm.”
In the answer, affirmative defenses, and counterclaims that it filed this week, HexClad makes a few admissions, including that it uses celebrity chef Gordon Ramsay, who owns a small stake in HexClad, to promote its products, and that it “controls the nature and content of its advertising, marketing, and promotion of” its products – even if it did not direct Ramsay to make the statement at issue in this action. The statement is, of course, that HexClad’s pans are “the Rolls Royce of pans.” The bulk of the filing, however, is dedicated to HexClad’s affirmative defenses and its counterclaims.
From Fair Use to No Confusion
First things first, the Los Angeles-based company asserts that Rolls-Royce’s claims are barred in whole or in part by the doctrine of laches. The rationale here, according to HexClad is that while “Rolls-Royce objected to HexClad’s use of Mr. Ramsay’s statement by letter dated May 23, 2023,” it did not do so in a “prompt” manner, “as the letter arrived approximately two years after HexClad began using Mr. Ramsay’s statement, a variation of the dictionary phrase ‘the Rolls-Royce of …’ in its advertisements and promotion.”
Beyond that, HexClad asserts that the British automaker’s claims are barred in whole or in part as a result of the following affirmative defenses among others …
– HexClad’s use of the dictionary phrase “the Rolls Royce of pans” constitutes fair use;
– HexClad has used the phrase “the Rolls Royce of pans” since at least as early as July 2021 without any known instances of confusion, and it constitutes comparative advertising pursuant to 15 U.S.C. § 1125(c)(3)(A)(i);
– HexClad did not infringe upon any intellectual property interest claimed by Rolls-Royce … and relatedly, HexClad argues (as we predicted) that the phrase “the Rolls Royce of pans” is not being used in a trademark or source identifying sense, but as a measure of prestige;
– The statement used by HexClad was offered as a statement of a person’s opinion; and
– The phrase “the Rolls Royce of …” is the subject of widespread third-party use as a descriptor of various things.
Declaration of Non-Infringement
Turning to its counterclaims, HexClad is seeking judgments from the court: (1) that it is not infringing Rolls-Royce’s trademark by way of its use of the “the Rolls Royce of pans” phrase in its advertising; (2) that such use does not constitute false designation of origin or unfair competition with Rolls-Royce; (3) that it has not diluted and is not diluting any mark owned by Rolls-Royce; (4) that its use of the accused quote is not use as a trademark or source indicator; and (5) that the phrase “the Rolls Royce of” is a descriptive phrase that can be used without infringing on the claimed rights of Rolls-Royce.
In furtherance of its declaratory judgment bid, HexClad asserts that “despite Rolls-Royce’s own acknowledgement of the meaning of the phrase ‘the Rolls-Royce of …’, the dictionary definitions and the common use of the phrase by other brands, the press and the public at large, Rolls-Royce is attempting, by this litigation, to preclude HexClad from using the descriptive phrase ‘the Rolls Royce of pans.’” Specifically, HexClad claims that Rolls-Royce, itself, has previously proclaimed in a press released that Rolls-Royce “is a byword for excellence: brands and products across almost every industry aspire to be ‘the Rolls-Royce of …’”.
At the same time, HexClad claims that “a variety of dictionaries contain definitions for the phrase … as a descriptive term of praise.” The cookware-maker cited a handful of dictionary definitions, including the Oxford English Dictionary, which “defines ‘Rolls-Royce’ with ‘of’ as ‘Any product considered to be the highest quality or best example of its type around,’” and the Cambridge English Dictionary, which defines “the Rolls-Royce of something” as “the best type of a particular type of thing.”
Not limited to Rolls-Royce’s own “acknowledgment” and dictionary definitions, HexClad maintains that the use of the phrase “The Rolls-Royce of …” is “common in advertising” and commonly used in the press. And still yet, “the phrase is also frequently used by third parties in its descriptive sense,” per HexClad, which points to a 1994 Los Angeles Times article, in which Robin Williams referred to Disney as “the Rolls-Royce of animation.”
In terms of its own use of the Rolls-Royce mark, HexClad states that the allegedly infringing phrase is attributable to Ramsay, who has used “the Rolls Royce of …” to describe various things over the course of his career – including “the Rolls Royce of beef,” “the Rolls Royce of Beef Wellingtons,” “the Rolls-Royce of the sea,” “the Rolls-Royce of a hog,” and “the Rolls Royce of spring vegetables,” among other examples, on TV shows, in one of his books, on social media, etc. Finally, HexClad contends that is “not aware of any instances of actual confusion” arising from its use of the accused quote since July 2021.
With the foregoing in mind and in light of the “actual, present and justiciable controversy between [it] and Rolls-Royce,” HexClad says that it is compelled to seek a declaration from the court that its use of the accused quote does not infringe Rolls-Royce’s trademark rights.
The case is Rolls-Royce Motor Cars Limited v. One Source to Market, LLC, 2:23-cv-08387 (D.NJ).
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