Stanley Black & Decker (SBD) is claiming confusion between its Stanley tools brand name and the Stanley drinkware brand produced by Pacific Market International, LLC (PMI). As a result, it is taking PMI to Court to protect its tools brand. 

At issue is what SBD refers to as a “2012 Agreement” that limited its use of the Stanley brand name to only insulated or uninsulated beverage or food containers and carrying cases related to those products. At the time, PMI had reportedly agreed to use the company name Pacific Market International, LLC, Pacific Market International, or PMI, in association with the Stanley name to differentiate its products from the tool brand Stanley Black & Decker.

“PMI has willfully and intentionally ignored the carefully crafted restrictions of the parties’ agreement, choosing instead to use Stanley broadly, including in ways that the parties’ agreement expressly prohibited and that infringe on Stanley’s trademark rights,” the lawsuit states in the filing in Connecticut Federal Court (Court).

In court documents obtained by SGB Media, the complaint further states, “This dispute arises from PMI’s pervasive misuse of Stanley in violation of the parties’ agreement and federal and state law.”

Stanley Black & Decker, Inc., Stanley Logistics, LLC and Black & Decker (U.S.), Inc. are the plaintiffs, and Pacific Market International, LLC and PMI WW Brands LLC (together, PMI) are the defendants as listed in the document filed with the Court.

The complaint, filed on February 17, 2025, states: “Long after Stanley was established, PMI’s predecessor began selling insulated containers (cups and bottles) labeled Stanley. Over a half-century ago, Stanley and PMI’s predecessor recognized both the extent of Stanley’s senior rights and that PMI’s use of Stanley, if unconstrained, was likely to cause consumer confusion. The parties thus entered into a series of agreements beginning in 1966 and continuing through 2012 to, among other things, prohibit PMI from using Stanley as its company name, limit PMI’s use of Stanley to specific categories of goods and place strict requirements on PMI’s website domain name and on how PMI’s advertising and goods had to be displayed and/or marked.”

In the filing, SBD said that, more recently, “PMI has willfully and intentionally ignored the carefully crafted restrictions of the parties’ agreement, choosing instead to use Stanley broadly, including in ways that the parties’ agreement expressly prohibited and that infringe on Stanley’s trademark rights. PMI “rode that misuse to viral success by, among other things, misappropriating Stanley as its company name, expanding beyond the specified product categories, ignoring the contractual prohibitions relating to PMI’s website domain name, advertising, and product marking, and confusing customers by selling hundreds and hundreds of millions (if not billions) of dollars of Stanley-branded merchandise in violation of the parties’ agreement.”

At the center of the fight is the 2024 recall of 2.6 million Stanley cups and the confusion SBD said it caused in the marketplace. SBD said in the filing that the recall made it seem the defective products came from them, rather than from PMI, which could impact the sale of other products. As evidence, SBD offered an example of a reporter from the New Yorker who called SBD looking for comment on the Stanley drinkware recall. Whether this one instance signaled widespread confusion (no other cases were detailed in the suit) or the failure of one reporter (or intern) at the New Yorker to confirm brand ownership is unclear or stated in the filing.

A History of Legal Interactions and Mergers

  • 1913: William Stanley, Jr. patented the all-steel vacuum flask.
  • 1965: Aladdin Industries, Inc. acquired the Stanley product line
  • 1966: SBD’s predecessor, Stanley Works, and PMI’s predecessor, Aladdin Industries Inc. entered into the first of a series of agreements designed to limit PMI’s use of the Stanley brand name (the “1966 Agreement”). Among other things, PMI’s use of “Stanley” was said to have been expressly restricted to “insulated containers adapted to keep their contents hot or cold.”
  • 1990: According to an SBD filing, Stanley Works and  Aladdin Industries, Inc. reportedly amended the 1966 Agreement to clarify the parties’ obligations (the “1990 Amendment”). SBD claims that Aladdin agreed to withdraw and re-file a new application or amend its then-pending trademark application from Stanley to Aladdin-Stanley.
  • 2002: PMI Worldwide acquires the Stanley and Aladdin brands.
  • Late 2009: Stanley Works agrees to buy Black & Decker for ~ $3.5 billion in an all-stock transaction, creating a global tool maker worth ~ $8.4 billion.
  • 2012: SBD and PMI reportedly entered into a new agreement (the “2012 Agreement”). SBD said in its filing that it did this to address PMI’s “then-noncompliant and encroaching use of Stanley, which exceeded the scope of the previous agreement.” SBD said in the February 17 complaint that the 2012 Agreement reinforced that PMI’s use of “Stanley” was limited to use on food and beverage containers (and its carrying cases), provided restrictions relating to PMI’s use of Stanley as a company name, division, or proper noun, limited PMI’s use of Stanley in connection with any website domain name, and also placed restrictions on PMI’s use of Stanley on goods and advertising, all in an agreed-upon effort to differentiate Stanley’s overall company and existing brand from PMI’s limited use of Stanley on food and beverage containers.
  • August 2024: SBD reported it reached out to PMI and asked PMI to comply with the 2012 Agreement and cease the infringement of its trademark rights.
  • September 2024: after hearing no response from PMI, SBD reported it sent a second letter highlighting that PMI failed to promptly and in good faith address the matters raised in its Notice Letter. The second letter also identified additional new actions taken by PMI that continued and expanded its misuse of the Stanley name in violation of the 2012 Agreement.

SBD claims that, notwithstanding the restrictions in the 2012 Agreement, PMI recently breached the 2012 Agreement and infringed SBD’s rights to seize an opportunity to expand and rebrand its product offerings. Among other things, SBD claims in the suit that PMI stopped including “PMI“ in its company name and changed its name to just Stanley and that PMI identified itself as Stanley in the marketplace, on products, in advertising, and in its website domain (www.Stanley1913.com), all in willful and intentional violation of the parties’ 2012 Agreement and Stanley’s trademark rights.

The lawsuit said that PMI violated its contracts by rebranding as Stanley 1913 and using “Stanley“ as a standalone name on its products and in advertising. The complaint also said that SBD faced harm to its reputation from “several waves of negative press“ about alleged risks of lead poisoning and burn hazards from Stanley cups.

SBD continues to cite cases of brand confusion caused by negative press regarding lawsuits and product recalls, detailing a February 2024 example where customers sued PMI over potential lead poisoning and with widespread media reports regarding concerns that “Stanley“ failed to disclose its products contained lead.

SBD said in its February 17 complaint that less than a year later, in December 2024, PMI announced a recall of approximately 2.6 million Stanley-branded steel travel mugs over potential burn hazards. The recall notice was reportedly titled “Stanley Recalls 2.6 Million … Travel Mugs Due to Burn Hazard,“ implying that the defective products originated from SBD, not PMI.

SBD claims in the lawsuit that “PMI deliberately avoided the use of ‘PMI‘ in its communications, statements and press releases related to the recall, thereby breaching the 2012 Agreement and misleading the public, media, and consumers into thinking that Stanley’s products were recalled.”

SBD asserts that “PMI’s breach of contract and trademark infringement has unjustly shifted the reputational harm of PMI’s defective products from PMI to Stanley.”

SBD continued to state that PMI’s breach of contract and trademark infringement poses an imminent threat of irreparable harm to Stanley, the Stanley brand and the goodwill and advantageous business relationships Stanley has earned by using Stanley in commerce for almost two centuries.

“The longer PMI is permitted to advertise, market, and commercialize itself as Stanley, and market and sell its products as Stanley products without mentioning PMI, the greater the harm that it will impose on Stanley’s reputation, value, and prestige, the Stanley brand’s position in the marketplace, and Stanley’s ability to control its brand in the future.“ SBD wrote.

SBD included a number of examples of the misuse of the Stanley name, including press releases, websites, social media, product logos, and packaging.

Stanley was founded in 1843. PMI’s Stanley brand reportedly dates back to 1913.

Plaintiffs Request Relief

In its filing, SBD is requesting that the Court provide relief to:

  1. Permanently enjoin PMI and its predecessors, successors, divisions, subsidiaries, and joint ventures thereof, together with any and all parent or affiliated companies or corporations, and all officers, directors, employees, attorneys, representatives, those acting in privity or concern with them, or on their behalf, from:
    • All of the described conduct and activities breaching the 2012 Agreement and/or infringing Stanley’s trademark rights;
    • Breaching any aspect of the 2012 Agreement;
    • All of the described conduct and activities breaching the 2012 Agreement and/or infringing Stanley’s trademark rights;
    • Breaching any aspect of the 2012 Agreement;
    • Directly or indirectly infringing SBD’s trademark rights;
    • Using “Stanley“ as any part of its company, trade name, or brand name, including in press releases, on its website, and in advertising;
    • Using the domain www.Stanley1913.com or any other domain name that includes “Stanley“ without PMI in contravention of the 2012 Agreement;
    • Using “Stanley“ on food and beverage containers without each instance of Stanley being accompanied by “PMI“ or “Pacific Market International“ in a manner that satisfies the requirements of the 2012 Agreement;
    • Using “Stanley“ in connection with products that are not food and beverage containers, or carrying cases for transporting the same;
    • Engaging in further unfair competition and unfair or deceptive acts or practices.
  2. Order specific performance by PMI of its obligations under the 2012 Agreement.
  3. Order PMI to (a) prepare and send to its customers and the general public corrective statements approved by SBD, correcting all false statements made and all misrepresentations made concerning the Stanley brand and (b) disclaim any association between PMI and SBD and/or SBD’s products;
  4. Require PMI to take affirmative corrective measures, including but not limited to product recalls, corrective advertising measures, disclaimers, and the forfeiture and/or destruction of any infringing or breaching articles;
  5. Award SBD actual damages it has sustained and/or disgorgement in an amount to be determined at trial;
  6. Award SBD enhanced and punitive damages;
  7. Award SBD prejudgment interest as well as its actual costs and attorneys’ fees in this action;
  8. Enter judgment in favor of SBD on each of its claims; and
  9. Grant to SBD such other legal, equitable or other relief as may be just and warranted under the circumstances.

Pacific Market International Responds
PMI issued a rebuttal to the SBD claims on Friday, February 21, stating, “Stanley Black & Decker’s lawsuit seeks to capitalize on PMI’s success with its Stanley brand in the food and beverage container category.“

“PMI’s Stanley brand dates back to 1913 when William Stanley, Jr. developed the revolutionary vacuum flask,“ said PMI in its statement. “Since that time, PMI’s Stanley brand has been associated with that rich history of innovation in the area of food and beverage containers. Today, PMI possesses long-standing rights in its Stanley brand, which it proudly displays on its food and beverage containers, along with its iconic winged bear logo and founding year—1913.”

PMI continues in its claim that SBD’s filing seeks to stop PMI from using PMI’s own incontestable federally registered “Stanley“ trademarks for its popular food and beverage containers — products over which SBD has no “Stanley“ rights.

“SBD’s filing appears aimed at exploiting PMI’s Stanley brand affinity and fanbase, which has been carefully cultivated and nurtured over the past 100+ years,“ the company said.

“We own the ‘Stanley‘ brand in the Food and Beverage container category,“ said Matt Navarro, global president at PMI WW Brands, LLC. “Stanley Black & Decker’s Complaint takes aim at our century-old Stanley brand, apparently seeking to capitalize on our success and undermine over a century of innovation and hard work developing our food and beverage containment products. Protecting and defending our brand is crucial.”

PMI said both companies have distinct market positions, customer segments and marketing approaches.

“PMI has grown Stanley into a global lifestyle brand, with a focus on innovative food and beverage containers,“ the company noted again. “In contrast, SBD holds itself out as ‘a global provider of hand tools, power tools, outdoor products, and related accessories,‘ according to its Annual Report recently filed with the SEC. The differences between these two companies and their brands is stark.”

PMI said it will vigorously defend the lawsuit and pursue all available remedies against SBD.

PMI is owned by HAVI, a global, privately-owned company that claims to “connect people with ideas, data with insights, supply with demand, restaurants with deliveries, and ultimately, people with the products they love.”

Image courtesy Stanley/Pacific Market International, LLC