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NEWELL – The Homer Laughlin China Co. has settled its trademark infringement lawsuit against San Francisco-based kitchenware giant Williams-Sonoma Inc., according to court records.
The Fiesta dinnerware maker had sued the retailer and competitor in September over its use of the term “Fiesta Favorites” in its print and online catalogs and on its social media sites.
Homer Laughlin said in the lawsuit, filed in U.S. District Court in Pittsburgh, that Williams-Sonoma had misleadingly used the word “fiesta” to capitalize on the popularity of Fiesta dinnerware and to sell its own products.
Both parties have filed a “stipulation of dismissal” with the court, saying that the case has been dismissed with prejudice and that each party bears its own costs.
What’s more, U.S. District Court Judge David S. Cercone recently filed an order saying the “parties have agreed to an amicable resolution of this matter” and that the case should be removed from the docket.
A copy of the order was sent to the U.S. Patent and Trademark Office in Washington, D.C.
Terms of the settlement were not disclosed. Neither Homer Laughlin attorney Charles B. Gibbons, of Pittsburgh, nor Williams-Sonoma attorney David A. Haworth, of Cherry Hill, N.J., could be reached for comment.
The judge’s order said the case could be returned to the docket if either party fails to execute the settlement agreement and that the court retains jurisdiction for the purposes of enforcing the settlement terms.
In October, the case was referred to the court’s Alternative Dispute Resolution program, but it is unclear whether mediation contributed to the settlement.
The lawsuit was Homer Laughlin’s latest legal attempt to protect its valued Fiesta brand, which is known by consumers and collectors alike for its bright colors, concentric circles and other design elements.
Williams-Sonoma made prominent use of the term “Fiesta Favorites” in its promotion of kitchen utensils, wares, cooking supplies, drink mixers and salsas, as well as certain Mexican and “Latin-inspired” recipes, such as guacamole.
The company insisted it was using the word “fiesta” not as a reference to Fiesta dinnerware but as a generic editorial tagline, used to describe groupings of items consistent with a Mexican or Latin American party theme.
“Fiesta Favorites” appeared as a heading at the top of several pages of the Williams-Sonoma June 2015 catalog, as did other taglines such as “Coastal” and “Summer Style.”
Among the exhibits filed with its motion to dismiss was a Merriam-Webster Dictionary definition of the word “fiesta”: a time of celebration marked by special observances; festival.
Homer Laughlin, however, alleged that Williams-Sonoma’s use of the word was intended to “deceive … the public into believing that defendant’s products are manufactured, licensed or authorized by Homer Laughlin.”
Such use could lead to consumer confusion, damage to Homer Laughlin’s reputation and dilution of the Fiesta trademark, the lawsuit read.
The lawsuit noted that Homer Laughlin has spent “substantial time, monies and resources” promoting its Fiesta dinnerware brand-introduced in 1936 and reintroduced in 1986-and that the trademark has become famous “due to its longevity and popularity.”
The lawsuit accused Williams-Sonoma of trademark infringement, unfair competition, unjust enrichment and trademark dilution under federal and Pennsylvania law.
In 2013, Homer Laughlin sued two American online retailers for selling counterfeit Fiesta dinnerware under the name of Carnaval. The lawsuit was settled when the retailers agreed to recall the products and Homer Laughlin donated them to homeless shelters and food banks.