US speaker maker Auratone have successfully defended the trademark they have used since the late 1950s, in an infringement case with Music Tribe (popularly known as Behringer).
The US District Court of the District of Nevada this week issued a judgment confirming the arbitration award. The decision will allow the family behind Auratone to retain their trademark and use it on their line of audio monitors, successfully fending off an attempt by Music Tribe to use that name on Music Tribe’s products.
Here is the timeline of the story, as it is described in the US District Court filing last week (see the section “background facts and procedural history”):
[Source – JUDGMENT in favor of Defendant Auratone LLC, and against Plaintiffs Music Tribe Commercial NV, Inc., Music Tribe Global Brands, LTD. Signed by Clerk of Court Debra K. Kempi on 7/23/2021.
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1958: Jack Wilson starts a speaker business in his home in LA, calling his hand-built speakers “Auratones.”
1963: Mr. Wilson files a trademark application for the name “AURATONE.”
1970s: Jack, his wife Harriet Elaine, and son Paul Wilson found the first Auratone Corporation, also involving their daughters in the business.
1980s: Quincy Jones uses Auratones on Thriller (among others) – hey, you don’t normally get to read this sort of trivia in court documents; it’s even there more than once.
July 3, 2004: Jack Wilson’s health is in steep decline, and he fails to renew the Auratone trademark. He passes away in June 2005, at the age of 84.
His affairs – even including materials like boxes of raw speakers and wires – pass to his daughters. They sell some of that speaker inventory on eBay, and by 2009 have updated the logo. But nearly seven years lapsed before new Auratone products are sold again.
Jack Wilson’s grandson, Alex Jacobsen, works with his mother and aunt to take over the Auratone family business, which he does after graduating from college in 2012. That business carries on with the original company inventory, from drills to artwork to test equipment.
2014: Music Tribe registers the AURATONE trademark as its own on April 13. Auratone files a protest on June 11 with the US Patent and Trademark Office and files its own trademark application on the same day, claiming its date of first use as December 22, 1959.
2018: Music Tribe begins selling its own Auratone-branded products.
This triggers a trademark infringement complaint by Auratone against Music Tribe. That goes through a multi-stage legal process but ultimately winds up in arbitration, bringing us up to the Arbitrator’s decision last week.
Essentially, if Music Tribe had successfully claimed the trademark was “abandoned” following the founder’s death, Music Tribe gets the trademark. They also had to demonstrate that there was no intention to resume use. If Auratone, conversely, demonstrated that the daughters and grandson inherit the business, Auratone wins their trademark back.
And so from that court filing, their concluding decision in factor of Auratone:
Notably, the death of the original trademark owner (and developer of the Auratone loudspeakers) presents special circumstances here that are sufficient to overcome a finding of abandonment. This conclusion is bolstered by the continuing fame of the AURATONE Mark amongst sound engineers in the music industry. The goodwill associated with the AURATONE Mark and its legendary speaker system continues to this day, as evidenced by the deposition testimony of independent third-party witnesses.
In the decision of the Arbitrator, Music Tribe can use the name “BEHRITONE” for their products, whereas the Auratone trademark – at least in the United States – will remain in the hands of Nashville-based Auratone LLC.
The full document is here (relevant ones are the newest order and judgment documents at top):
Auratone LLC and their products:
Update/note: This decision covers only the Auratone trademark under US law (as decided by the US District Court, a federal court). European trademarks are registered separately, though there, too, Auratone successfully challenged Music Tribe’s trademark registration – and won an appeal, as well. As of press time, Music Tribe still operates auratone.eu, despite the EUIPO decisions. You can see there that Music Tribe copies both the updated modern Auratone logo and disguises their speakers to look like the originals, complete with branding.