Movin’ On Up: PODS Beats U-Haul in Trademark Infringement Case              

Posted by on Oct 13, 2014

What began as a trademark infringement case, developed into a battle of possible “genericide” when two popular moving and storage companies went head-to-head in federal court. Back in 2012, PODS sued U-Haul for trademark infringement for its use of “pods” under both state and federal laws. U-Haul countered that it was not infringement, because pods has become a generic term and has lost its distinctiveness in the market.

Trademarks are always susceptible to losing their protection by genericide, or becoming a generic term. This often happens when marks are so well recognized in their market that they become ubiquitous with the product. The result is that the trademark can longer distinguish the product or service from similar products or services of other owners or businesses. Some notable items that formerly had trademark protection, but later lost it due to genericide include escalator, thermos, and videotape.

PODS, short for Portable On Demand Storage, provides storage containers and moving services, and was founded in 1998. PODS alleged that U-Haul, another popular moving and storage service provider, improperly and unlawfully used the trademark to divert sales from its competitor, PODS. U-Haul was using the mark to advertise its “U-Box” home storage system, which works similarly to PODS’ operation. Evidence in the case showed that U-Haul used the mark more than 600,000 times on its website since 2010.

The eight-person jury unanimously found that PODS had not fallen victim to the dreaded genericide, and sided with PODS on the infringement claim as well as trademark dilution, unfair competition, and deceptive trade practices. In all, PODS walked away from the trial with more than $60 million dollars in damages. The case was heard over a two-week trial in the U.S. District Court in Tampa, Florida. It is unclear whether U-Haul will appeal the verdict.

As for now, this can be an important lesson in the double-edged sword that businesses can face. While it is desirable to lead any market with a product or service, there is the inherent risk of becoming so recognizable and well-known that a mark may just dissolve into a world of similar products.

The full court caption for this case is PODS Enterprises Inc., v. U-Haul International Inc., 9:12-cv-01479, U.S. District Court, Middle District of Florida.