Oldcastle BuildingEnvelope® (OBE) has filed a lawsuit against a media publishing company alleging trade name and trademark infringement and unfair competition for the publisher’s use of the term “Building Envelope.” According to court documents filed in the United States District Court for the Northern District of Texas, Dallas Division, the complaint is against BNP Media (BNP), a publisher of more than 50 publications spanning a variety of markets.

In the suit, OBE alleges BNP’s “unauthorized use of Plaintiff’s trade names OLDCASTLE BUILDINGENVELOPE, OLDCASTLE BE and BUILDINGENVELOPE, and marks OLDCASTLE BUILDINGENVELOPE®, PUSHING THE BUILDING ENVELOPE®, and THE BUILDING ENVELOPE COMPANY™” (collectively called the Marks).

“Since as early as June 1, 2010, Plaintiff has distributed white papers, manuals, newsletters, magazines, and other printed publications designed for architects, building consultants, engineers, and contractors in the field of building and construction design and education using the Marks,” the complaint reads. “Plaintiff also has used the Marks to provide online continuing education unit (‘CEU’) courses, webinars, and webcasts designed for architects, building consultants, engineers, and contractors in the field of building and construction design and education.

“Recently, Plaintiff learned that Defendant is using the Marks or substantially similar names and marks for the same CEU business and the same goods and services, in the same or substantially similar stylization and colors, and in the same fields of use in which Plaintiff uses the Marks. Defendant’s actions have infringed Plaintiff’s rights, caused confusion by creating the false impression that Defendants are somehow affiliated with, sponsored by, or approved by Plaintiff, diluted Plaintiff’s Marks, diminished the value of Plaintiff’s Marks, damaged Plaintiff’s business reputation, and damaged the goodwill generated by Plaintiff’s long-standing use of the Marks. Plaintiff has been forced to bring this action to remedy Defendant’s acts of infringement and unfair competition and to prevent unjust enrichment.”

OBE notes that it is a certified education unit (CEU) provider for industry trade groups and is “associated prominently” with the marks referenced.

In the facts section of the complaint, OBE points out that it obtained federal trademark registration for the marks with the United States Patent and Trademark Office, and that its date of first use in each class—Oldcastle BuildingEnvelope and Pushing The Building Envelope—was at least as early as May 1, 2008, and June 1, 2010, respectfully.

“In addition,” the complaint asserts, “[OBE] recently filed U.S. Application Serial No. 86/604,626 for the word mark OLDCASTLE BUILDINGENVELOPE … for ‘newsletters, magazines and product and service information catalogs in the field of building and construction design and education for integrated building structures’; … for ‘consulting, design, engineering and manufacturing services for integrated building structures’; and … for ‘educational services, namely, providing CEU courses and presentations in the field of architecture and integrated building structures.”

“Plaintiff rightfully considers the Marks to be valuable assets. Since June of 2010, Plaintiff has expended substantial time, effort, and capital in promoting and establishing its business and related products and services using the Marks among architects, building consultants, engineers, and contractors in the field of building and construction design.”

Meanwhile, OBE asserts that customers, media and employees frequently abbreviate “Oldcastle BuildingEnvelope” to “BuildingEnvelope” due to its successful branding efforts. OBE is also currently the registered owner of the domain names buildingenvelope.com and oldecastlebe.com, and the suit notes that it has operated accounts using the names and marks Oldcastle BuildingEnvelope and OldcastleBE since as early as March 2010. According to the complaint, BNP has begun operation of a website domain www.buildingenvelopeonline.com.

OBE also contends that BNP has utilized a “contrasting dark color/light green color scheme that is nearly identical to the unique branding scheme used by Plaintiff.” OBE asserts that its own scheme has been widely promoted within the industry. OBE alleges that BNP indicated it would cease using a light green color scheme but has failed to do so.

“In addition,” the complaint reads, “… Defendant has stacked the terms ‘Building’ and ‘Envelope’ and linked them with the letter ‘L’ in a stylized way that is substantially similar to the unique stylized visual format used by Plaintiff, in which the terms are closely connected either horizontally or vertically such that the viewer perceives the two words to be as one. Defendant has intentionally mimicked Plaintiff’s unique source identifiers by the selection and adoption of this branding scheme.”

OBE claims in the complaint that the defendant’s “use of these infringing names and marks, marketed with the same branding scheme as widely adopted and used by Plaintiff, has caused Plaintiff to lose sales and customers, caused substantial confusion among consumers in the market place, and will take substantial effort and resources to repair.”

OBE also notes in the complaint that BNP has publically claimed “exclusive rights to use the word mark BUILDING ENVELOPE for goods and services related to the goods and services covered by Plaintiff’s senior statutory and common law rights in the Marks.” Additionally, OBE says that BNP’s use of the marks to target consumers in the industry, particularly with respect to online CEU educational services and publications, is creating the false impression that it is affiliated or endorsed by OBE.

OBE says that if BNP continues the actions alleged in the complaint, that OBE will lose a valuable asset in the form of the goodwill and exclusivity that it has developed through expenditures of time, money, and energy and will have to retool its branding and marketing efforts at great cost and expense. OBE also alleges that BNP will unfairly profit at its expense, and that BNP has received and will continue to receive money, including advertising and subscription revenue and other benefits from its unauthorized and unlawful use of the marks. The suit contends that public confusion is likely because BNP is using the infringing names and marks in the same media as OBE, on website and social media accounts, in press releases, in posting on the Internet, at trade shows, and in literature and other advertising, all targeting customers in the State of Texas and in commerce in the United States.

Counts listed in the complaint are:

  • Federal Trademark Infringement under the Lanham Act
  • Federal Unfair Competition under the Lanham Act
  • Common-Law Trademark Infringement and Unfair Competition under Texas Law
  • Dilution
  • Unjust Enrichment
  • Request for Injunctive Relief

OBE is requesting that BNP stop using, reproducing and distributing materials displaying the name and mark “Building Envelope” for any publications or CEU education services targeting the architectural, engineering and construction community. It also requests BNP stop using a color scheme similar to its own.

Additionally, the suit requests that BNP engage in “corrective advertising” or pay OBE “an amount sufficient” for it to engage in corrective advertising. OBE also requests BNP abandon the domain name and the federal trademark application using the mark “Building Envelope,” and finally, that BNP “deliver for destruction all articles of merchandise, designs, signs, plaques, advertisements, packing … or control that are used in the United States or on the Internet and bear the Marks and/or any confusingly similar marks.”

Relief requested by OBE includes “judgment in an amount reflecting Plaintiff’s actual damages or Defendant’s profits, … judgment in an amount sufficient to compensate Plaintiff for its losses caused by Defendant’s actions described herein, … an order compelling Defendant to account for all profits and benefits arising from their use of the Marks, … an order compelling Defendant to cease and desist from all use of the infringing names and marks, … an order compelling Defendant to transfer all domain name registration for URL buildingenvelopeonline.com and all registrations for any other domain names confusingly similar to the Marks held in the name of, or under the control of Defendant,” as well as a number of other items and damages.

1 Comment

  1. Oldcastle is just being a bully. The name , term, and idea of “building envelope” I believe has been around for years. I would ask the architectural community when they started using the term building envelope and their thoughts on the idea of those words being exclusive to only to Oldcastle and not the architectural community. If it was one of their direct competitors it would be a different argument.

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