A lawsuit asserts that a promotional products distributor infringed on the trademarks of Travelers by using the insurer’s logo in marketing solicitations sent to some of the company’s insurance agents.

The Travelers Indemnity Company accused Dynamic Online Marketing Corporation (DOMC, asi/184713), which lists offices in Buffalo, NY, and Concord, ON, of continuing to use the marks in its prospecting to agents even after agreeing to stop doing so multiple times, according to the suit.

“Defendant’s continued unauthorized use of the Travelers marks in connection with offering and selling various products despite knowledge of Travelers’ trademark rights and Travelers’ objections demonstrates that defendant is willfully trading upon the goodwill of Travelers and the Travelers marks and/or recklessly disregarding, and (continuing) to disregard, Travelers’ rights,” read the lawsuit filed in the U.S. District Court for the District of Connecticut.

The case now appears to be headed for a settlement, but the Travelers suit was initially asking a court to hold the promo distributorship liable for potentially millions of dollars in damages.

A Settlement Pends

Travelers, which Forbes lists as being the largest business insurance company with 8.09% market share, filed the suit in June 2023. On Sept. 20, Travelers and Dynamic notified the court that they’d reached a tentative settlement.

“The parties have reached a resolution in principle, which will resolve all claims asserted in this action,” a court filing read. “The parties are preparing consent judgment papers to be filed with the court.”

Travelers and Dynamic jointly requested that the case be stayed for 21 days to allow time for the consent judgement papers to be finalized and filed with the court.

Stephen Brenkel, a company leader with Dynamic, told ASI Media that the distributorship did not wish to comment on the case at this time.

Travelers sells its own line of branded merchandise, including in an online store. Drinkware, apparel, umbrellas, golf goods, technology items and more are on offer.

A Corkscrew Kicks Off the Case

While the suit may be going to settlement, the details alleged in Travelers’ complaint could prove worth considering for promo distributors and suppliers as they engage in email prospecting and other marketing.

According to Travelers, Dynamic sent a promotional email to a Travelers agent in March 2018. The subject line read “TRAVELERS Corkscrews – Personalized! Just $6 Each.”

In the email, there was an image of a corkscrew decorated with the Travelers name and the company’s famous umbrella logo, which is said to have first been used around 1870 but that became the official logo around 1960.

The solicitation email featured an image of the Travelers name and logo on a corkscrew, constituting trademark use without the insurer’s permission, the suit alleged.

There was also what Travelers described as a “purported” testimonial from another agent.

Travelers caught wind of the email and sent correspondence to Dynamic telling the distributorship it didn’t have permission to use its marks in solicitations – or otherwise – and to cut it out. Following an initial reach-out, Travelers said it had to follow-up three times before Dynamic responded.

On June 11, 2018, the suit narrative continued, Dynamic sent an email to Travelers to confirm it had stopped using the marks and “will not in the future use any of Travelers’ trademarks including, but not limited to, selling, offering to sell, promoting, and advertising any products bearing any of Travelers’ trademarks to any person or business (including, but not limited to, Travelers’ employees and Travelers’ insurance agents and brokers).”

Persisting With Pens

Only, according to Travelers, Dynamic was back at it again the following summer.

On Aug. 26, 2019, Dynamic allegedly sent a Travelers agent an email offering to provide branded and personalized products – pens this time around.

The subject line read “Travelers Personalized Executive Pens” and there was an image in the email showing a pen with the Travelers name and umbrella logo. Once more, a “purported” agent’s testimonial was included, the insurer stated.

Another prospecting email in which Travelers said Dynamic used its name and logo without permission, this time on a pen.

Travelers again found out about the prospecting email with its marks and once more contacted Dynamic. The distributor didn’t respond right away, the lawsuit said. Through correspondence and phone messages, Travelers reached out to Dynamic at least five times between Oct. 4, 2019, and Dec. 3, 2019, before the promo company engaged, the complaint stated.

On Dec. 7, Travelers and Dynamic entered into what the insurer described as a signed contract in which the distributor agreed to permanently stop using the Travelers logo and name and to “destroy all materials bearing one or more of the Travelers marks that are used to apply the Travelers marks to the infringing products including, but not limited to, screens, decals and molds.”

The agreement also stated that if Dynamic breached the contract, it would have to pay Travelers $5,000 in liquidated damages per breach, as well as Travelers’ costs and attorney fees for addressing the breaches, as well as other potential damages a court may award.

Unauthorized Use Resumes Four Years Later

As far as Travelers was aware, Dynamic abided by the contract – until 2023, according to the complaint.

In February and March of this year, Dynamic sent two more emails to agents associated with the insurer, the lawsuit alleged. One offered to sell pens, the other a golf divot repair tool with a personalized magnetic ball marker. The format was similar to past approaches: Images in the email bore the Travelers logo on the products offered and the Travelers name in the subject line.

Travelers sent another letter to Dynamic in April telling the company to stop its digital solicitations using the insurer’s marks. Fed up apparently, it filed suit in June, noting that Dynamic is not and has never been an authorized agent or licensee of Travelers.

Dynamic’s “ongoing unauthorized use of the Travelers marks creates the false impression that defendant is a part of Travelers (or) an approved vendor or partner of Travelers,” the suit said in part. “Consumers are especially likely to believe that such affiliation exists here because Travelers itself promotes and sells a wide variety of promotional items to agents, brokers and consumers of all types.”

Beyond trademark infringement, Travelers alleged trademark dilution, trademark counterfeiting, breach of contract, and more in the suit. Again, while the case now appears to be going to settlement, Travelers initially asked the court to, among other things, force Dynamic to pay all profits it may have derived from using Travelers’ marks and pay statutory damages of up to “$2 million per mark per type of product or service sold, offered for sale, or distributed by defendant bearing marks deemed to be counterfeits” of Travelers.