It might seem like a bad idea to get into a fight with an adversary that has battleships and fighter jets at its disposal.
But that isn’t stopping Alyson Pacini.
Pacini, co-owner of a small jewelry shop on Cape Cod, isn’t backing down after the US Navy launched a new recruiting campaign with the slogan “Forged by the Sea” — a tagline she’s been using since 2011 and trademarked five years later.
“I feel very much taken advantage of right now,” said Pacini, whose company slogan was inspired by her use of sea glass, pearls, and other nautical motifs to make hammered necklaces and bracelets.
“What gets me is that when I read about this, it said they were working on this campaign for 18 months and they only reached out in September. They were going for it no matter what. I thought it was dishonest.”
Actually, the Navy also spent $10 million to come up with the very same slogan.
Pacini, who handles the day-to-day operations of her Designs by S&R in Orleans as well as making the jewelry, was suspicious when she received a call from a representative of the US Navy this fall. She hadn’t hired a trademark attorney to file the paperwork, and she’d received scam letters in the mail with offers to buy it in the past.
The representative was following up on an earlier e-mail, one that inquired about Pacini’s trademark, saying the Navy believed the “tagline would work well with our nautical missions and would be interested in buying it.”
Pacini was cautious.
“When the Navy called I was in shock,” she said. “Obviously, I want to support the troops,” she said — her grandfather was a “proud Navy man” — but she also wanted verification that the person she was talking to was the real deal.
The Navy representative, Nadine Santiago, followed up with a written request: Would Pacini agree to transfer the trademark registration to the Navy in exchange for $5,000? Santiago suggested the Navy would then provide her a license “to continue using the name on your business at no cost to you.”
Pacini was wary and responded saying that she believed the trademark was worth more than their offer.
Santiago upped the offer to $7,500 on Nov. 14, and Pacini responded six days later saying she was busy with her shop during the holiday season and was planning to contact a lawyer.
A week later, the Navy filed the trademark paperwork for using the phrase in games, puzzles, and toys. On Dec. 5, they filed another round of paperwork for the use of the term in recruitment efforts. And on Dec. 9, they unveiled the slogan in a sleek new ad during the Army/Navy football game.
A few minutes after the ad ran, Pacini’s phone began ringing off the hook, as her friends and family recognized the phrase. “My phone exploded,” she said, and was surprised the Navy had gone forward without closing the loop with her.
The Navy’s and Pacini’s claims to the name both seem legally sound, in part because Pacini’s trademark only applies to jewelry, said Stacey Dogan, a professor in intellectual property at Boston University. “Ordinarily the trademark holder wouldn’t have a right to prevent the use of a mark on unrelated products and services.”
However, there is a legal precedent that Pacini might call upon should she decide to pursue a case, Dogan said. It’s the concept of “reverse confusion” and occurs when a small trademark holder that doesn’t have a commercially well known name comes up against a larger player who “adopts the mark and inundates the marketplace with marketing such that consumers begin to associate the trademark with the later adoption,” she said.
“Her claim would be either that consumers are confused into thinking she’s an authorized retailer of the Navy logo, or that consumers assume that she has used the logo without the Navy’s permission,” Dogan said. There have been cases where this argument has won in court, Dogan said, but it would certainly cost far more than $7,500 to bring a suit against the Navy.
The Navy, for its part, said in a statement that it does not believe that the trademark poses any conflict with Pacini’s and that the “planned unveiling and debut of the Navy's ‘Forged by the Sea’ new recruiting campaign was never in question.”
The Navy will refrain from selling jewelry so as not to infringe on Pacini’s trademark, public affairs officer Jessica McNulty said in an e-mail.
Pacini says she still feels “blindsided,” and she hired an attorney Thursday.