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“This We’ll Defend” has been the motto of the United States Army since the Revolutionary War. Two companies — Grunt Style LLC and TWD, LLC — both sell patriotic and military-themed apparel bearing the phrase, and both claimed trademark rights to it for clothing. Grunt Style, founded by a U.S. Army veteran and based in Chicago, began using the mark on its clothing, company letterhead, website, and at trade shows as early as 2011. TWD, a California company, conceded it did not begin using the mark on clothing until September 2014. TWD successfully registered “This We’ll Defend” with the U.S. Patent and Trademark Office in 2015, receiving a federal trademark registration.
Both companies filed lawsuits in 2018 — Grunt Style in the Northern District of Illinois and TWD in the Southern District of California. The California case was transferred to Illinois, where the district court granted Grunt Style’s motion for partial summary judgment in 2022, dismissing all of TWD’s claims and cancelling its federal registration based on Grunt Style’s prior common-law rights. A bench trial on Grunt Style’s counterclaims followed in 2024, resulting in a $739,500 damages award to Grunt Style plus a permanent injunction barring TWD from using the mark. TWD appealed, raising numerous issues from across the eight-year litigation.
The Court’s Holding
The Seventh Circuit affirmed in a per curiam order. On the core issue of trademark priority, the court held that Grunt Style established prior and superior common-law rights through its use of the mark beginning in 2011. Federal trademark registration does not override prior common-law use — “trademark ownership is not acquired by federal or state registration, but rather from prior appropriation and actual use in the market.” TWD’s 2015 registration was therefore void ab initio as against Grunt Style’s established rights, and its cancellation was proper. The court rejected TWD’s argument that Grunt Style needed to prove a high volume of sales: a publicly accessible nationwide website plus consistent use in company materials and at trade shows was sufficient. The court also rebuffed TWD’s “ornamentality” theory — that Grunt Style’s early uses were mere decoration rather than source-identification — finding those uses were “indisputably source-identifying” given the size, location, and dominance of the mark on the products.
On prejudgment interest, the court declined TWD’s invitation to depart from the Seventh Circuit’s Gorenstein rule (prejudgment interest is “presumptively available” for trademark infringement claims under 15 U.S.C. § 1117(a)), even noting that the Third and Fourth Circuits have taken the opposite view. The court held it will not abandon circuit precedent merely to join a circuit split, particularly where TWD neither asked the court to overrule Gorenstein in its brief nor seriously addressed it at oral argument.
Key Takeaways
- Prior use beats registration. A federal trademark registration creates a presumption of validity, but that presumption “evaporates as soon as evidence of invalidity is presented” — including evidence of another party’s prior use.
- You don’t need high sales volume to establish prior use. A publicly accessible national website, trade show appearances, and company materials (letterhead, invoices) can suffice even without high revenue or widespread recognition.
- Consistent multi-year use defeats abandonment arguments. State-law reincorporation, modest changes in product lines, and variations in how the mark appears on products do not break the chain of “continuous use.”
- Expert witnesses must be qualified on the record. Trademark attorneys offering expert testimony must have their credentials formally introduced. Opinions that stray into legal conclusions (“the use was ornamental”) risk exclusion under FRE 702.
- Seventh Circuit’s prejudgment interest rule survives circuit split. The court reaffirmed Gorenstein Enterprises — prejudgment interest is presumptively available on § 1117(a) infringement claims in the Seventh Circuit.
Why It Matters
This case is a clear reminder that federal trademark registration — while valuable — is not a trump card. Companies that rush to register a mark without checking for prior common-law users can find themselves cancellation targets even years after registration. The lesson for brand owners: conduct thorough pre-filing searches that include not just the federal trademark register but also smaller companies’ websites, trade publications, and trade show records. A small veteran-owned apparel company selling through its website in 2011 had stronger rights than a company that obtained a federal registration four years later.
The case also matters for trademark litigation strategy in the Seventh Circuit: the Gorenstein prejudgment interest presumption remains alive, meaning defendants in § 1117(a) infringement cases in that circuit face a material financial risk of interest running from the date of infringement, not just from judgment. With the Third and Fourth Circuits now disagreeing, a future defendant may need to mount a more sustained effort to convince the Seventh Circuit to revisit Gorenstein.