Judge denies ban on sale of Double Decker T-shirt

Published 11:10 am Friday, August 11, 2017

A Lafayette County Chancery Judge denied a request from the city of Oxford for a preliminary injunction that would have stopped Oxford T-Shirt Co. from selling its version of Double Decker T-shirts and other clothing.

In April, the city of Oxford filed a request for the temporary restraining order claiming Oxford T-Shirt Co. had committed trademark infringement by selling the Double Decker items, which was granted at that time by Chancery Court Judge Robert Whitwill.

After a few continuances, a hearing was held Wednesday in Oxford and on Thursday, Whitwell denied the preliminary injunction against Oxford T-Shirt Co.

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Mayor Robyn Tannehill said the case is still pending and the Oxford Board of Aldermen will now consider which steps to take.

The city of Oxford claims Oxford T-Shirt had committed trademark infringement by selling the Double Decker items in April before the annual festival.

The owners of Oxford T-Shirt Co. did not immediately respond to requests for comment Tuesday. City attorneys could also not be reached for comment.

The city’s tourism department, Visit Oxford, raises funds through T-shirt and other memorabilia sales during the annual Double Decker Arts Festival, that goes into the budget to help fund the event for the following year. The name has been used since 1996 for the festival and is used to help promote tourism to the city.

In September 2013, the city had the festival’s name trademarked so that only the city of Oxford could use the name on materials associated with the festival.

Oxford T-Shirt Co. was selling merchandise with the words “Double Decker” in conjunction with the words “On the Square,” or “The Square,” which the city claims was clearly designed to evoke the Double Decker Arts Festival. Additionally, the motion claims the company’s advertising for the shirts “were expressly tied” to the festival, using such phrases as “We are excited about Double Decker weekend!!!,” and “It’s almost Double Decker time!!”

The city claims that even where the identical words of the trademark aren’t used, “injunctive relief is appropriate where the meaning is so similar that under the circumstances its use reasonably calculated to deceive and result in injury.”

The motion stated the words “Double Decker” has held a special meaning in north Mississippi for more than 20 years.