ADT sues copycats

BOCA RATON, Fla.—Residential security giant ADT says it is actively going after security companies, big and small, who make “the mistake” of using signage that looks like ADT's trademarked octagonal, blue sign. This summer, ADT filed lawsuits against three companies and won permanent injunctions against those companies, which means they're legally prohibited from using the blue octagonal signs to advertise their businesses.

“This is a case where imitation is not the highest form of flattery; it's trademark infringement pure and simple, and we intend to put a stop to it,” said David Bleisch, ADT VP and general counsel. The three companies ADT successfully sued this summer are: Advanced Design Technologies, Boca Raton, Fla., Moore Protection Home Security, Redondo Beach, Calif., and IC Realtime, Pompano Beach, Fla.

Matthew Wagman, president of Advanced Design Technologies, declined to comment on ADT's legal action, as did Richard P. McCusker, Jr., attorney for IC Realtime.

Don Moore, president of Moore Protection, strongly disputes ADT's allegations. However, he said,

it was just too expensive for his small company to fight ADT, which he contends is using the legal system “to thwart small American businesses.”

“I thought I had a good case, but I was advised by counsel that just to get the case in court would cost many tens of thousands of dollars in legal fees,” said Moore, whose company also displays a blue octagon logo on its web site.

Does a big company like ADT really need to bother with smaller companies using similar looking signs? Is it really a threat to their business, after all? The answer to these questions, Bleisch said, is “yes.”

“It's a registered trademark and we can't allow it to become a generic mark,” Bleisch said. “We want to let [the public] know, even from a distance, that the blue octagonal sign means a property is protected by ADT.”

Bleisch said there's been a proliferation of ADT copycats in the market in recent years. “We've had some employees and service vehicles out in neighborhoods, they'll see a blue octagonal sign and think it's a property protected by us, and then they get close and read the small print and see it's someone else.”

Bleisch said, “dozens of companies” have adopted ADT-look-alike signs and their logo decisions are not serendipitous.

“There are hundreds of shapes and colors that are available and they're picking the well-known blue octagon. To me it's pretty clear that they're trying to ride on our coattails and confuse the customer into thinking they're affiliated with us,” he said.

The ADT sign signifies “security and peace of mind and protection, and we've spent millions of dollars in advertising [and years of working with customers to achieve the reputation],” Bleisch said.

Eric Griffin, former general counsel for Protection One and now in private practice, said such trademarks are very important and valuable.

“I think it's very important that companies seek to protect their intellectual properties and their trademarks,” Griffin said. “They invest a lot of money in promoting their brand and their trademarks and their symbols and their logos and to have someone come along and just copy the thing is a real detriment to the company.”

But can a company really trademark a common shape of a particular color? Griffin said that it can. “A trademark can be any unique kind of symbol or word or color combination,” he said.

Under trademark law, he said, there also is a requirement that you have to use the trademark in commerce or intend to use it for that purpose. Griffin said that unlike domain names on the Internet, “you can't just go out and squat on any number of symbols and say, 'Well, I've trademarked these and nobody else can use them unless you're actually using them or intend to use them.'”

Whether someone else's use of a symbol similar to your trademark is confusing to customers is something for a court to decide, Griffin said.

In this case, ADT, which has 6.8 million customers, was successful in its legal action against the three companies it accused of using look-alike signs.

Moore declined to comment on the specifics of the case involving Moore Protection, such as how the company's signs might change in the future.

Regarding ADT, he said: “I absolutely think they're wrong, and I wish some legal entity that had the werewithal to fight a giant Swiss corporation would step in.”

ADT is headquartered in Florida, but its parent company, Tyco International, is incorporated in Switzerland.

As it steps up enforcement, ADT is encouraging its employees to report infringers. “We will give a $25 gift certificate to any employee who sees an infringing sign and takes a picture of it and sends it to us so we can take appropriate action.”

As part of its initiative, ADT also is contacting sign manufacturers. ADT is alerting sign makers that the company has trademarked the blue octagon shape so the manufacturers can warn prospective customers that ordering such signs could lead to legal trouble.

Bleisch said ADT is giving fair warning to infringing security companies “sending them cease and desist letters” and only resorting to legal action when they will not comply.

ADT is cracking down on companies who copy their trademarked symbol in online venues as well.

Those who copy ADT signage risk owing monetary damages, in some cases, corrective advertising can also be imposed.