A jury awarded $60.7 million to moving and storage company PODS Enterprises Inc. in a federal trademark lawsuit against competitor U-Haul International Inc.
The jury delivered its verdict Sept. 25, finding that U-Haul’s use of the terms “pod” and “pods” to describe its U-Box portable storage product infringed on PODS’ trademarks.
“We are very happy for PODS and very appreciative for the time and effort the jury put into the case,” said Jonathan Sbar, an attorney for PODS.
“The jury found that the trademark was famous and determined that it was not generic,” Sbar said. “It is certainly an important finding for PODS, which considers the trademark to be a very valuable asset.”
Sbar is a partner at Tampa, FL-based law firm Rocke McLean Sbar. The lead attorney for PODS was Charles E. Cantine of New York City law firm Stroock & Stroock & Lavan.
The two-week trial was conducted in U.S. District Court in Tampa.
PODS filed its lawsuit against U-Haul in 2012.
Both sides respond
Representatives of PODS and U-Haul issued statements to local media following the verdict.
“PODS is the genuine brand leader in the containerized moving and storage industry and the jury’s finding recognizes that the PODS brand has become famous nationwide,” Aaron Parker Sr., senior vice president and general counsel at PODS, said in a statement to the Tampa Bay Business Journal.
PODS is based in Clearwater, FL.
In a statement to the Tampa Bay Times, U-Haul spokesman Sebastien Reyes said: “U-Haul International is disappointed in the jury’s verdict in the lawsuit brought by PODS Enterprises Inc. … . U-Haul respects the legal process, even when it is disappointed with the results, and it will continue to work within that process in this case.”
Phoenix-based U-Haul is owned by Amerco, based in Reno, NV.
As of Sept. 26, U-Haul still was using the terms “pod” and “pods.”
‘Genericide’ avoided
The verdict saves the PODS trademark from “genericide,” a term used to describe the loss of legal protection of a trademark because of common usage. Among the trademarks that have passed into commonly used language are escalator, dry ice and kerosene.
As of Sept. 26, U-Haul was using the words “pod” and “pods” on its website. If U-Haul does not voluntarily stop using those terms, attorneys for PODS may have to file for a formal injunction — a court order barring U-Haul from using the terms.
It’s uncertain whether U-Haul will appeal the verdict.
PODS had sought $170 million in damages, but it was awarded less than half of that amount. Jurors awarded $45 million for actual damages caused by U-Haul’s use of the trademark. They awarded another $15.7 million, representing the amount of U-Haul profit that could be attributed to use of the trademarked terms. PODS sued U-Haul in 2012.
“We asked for more damages than were ultimately awarded, but we are happy that the client prevailed,” Sbar said.
