i4F announced that it has secured the full rights to the U.S. “SPC” trademark as part of a settlement with Kolay Flooring and its owner, Daniel Mitchell. The settlement frees the flooring industry from current U.S. Customs restraints related to SPC products carrying L2C program holographic labels.
In recent months, the flooring industry faced “SPC” trademark-related challenges due to Customs seizures of rigid vinyl flooring products (SPC), which caused concerns and burdens for manufacturers, importers and distributors. The detained companies—many of them liaisons between manufacturers and retailers—were forced to pay large sums to have containers holding their SPC products released, according to i4F.
In fact, one of i4F’s licensees was detained last fall, prompting i4F to investigate the situation and then act on behalf of the industry. Records show that Kolay’s Mitchell filed for the SPC (stone plastic composite) trademark in January 2017. It was registered in October of that year.
SPC is used as a generic acronym in flooring, with multiple definitions; it is also widely used in other walks of life. For example, a Google search for the definition of SPC yielded 192 entries.
“[Mitchell] claimed that [SPC] was not an acronym,” Mattie de Koning, chief IP officer for i4F, told FCNews. “We tried to convince him that he could not do that. We fought for six months and are very happy we succeeded in obtaining this trademark; companies are now free to import SPC products without product being seized.”
As a result of the settlement and follow-up amendments to the existing settlement agreements with SPC flooring technology licensors Unilin and Välinge, all Customs actions based on the “SPC” trademark against SPC products carrying an L2C label have stopped.
The L2C program is an industry authentication labeling program for licensed partners which requires an authorized and unique holographic label on every box of product that is covered by certain intellectual property.
de Koning said he did not know the number of companies affected; as part of the settlement agreement, names cannot be released. “We know that Välinge and Unilin have a lot of licensees impacted by this,” he said. “Companies should be able to export product to the U.S. without issue.”
It was reported in May 2024 that Guang Tai He Import Export Inc., a Maryland-based flooring company, had secured a permanent injunction from the United States District Court for the Central District of California over Daniel Mitchell and Kolay Flooring over the term “SPC.”
Guang Tai argued in court that Kolay’s federal registration of the generic term “SPC,” which resulted in more than 16 containers of the plaintiff’s flooring being detained, was improper. The Court agreed in granting the permanent injunction.
Industry responds favorably
Following i4F’s announcement, Unilin reported that it had entered into a contract with i4F to obtain non-revocable rights on the “SPC” trademark. The agreement ensures Unilin licensees and its partners the freedom to operate without port repercussions. “Our primary goal has always been to support our partners and ensure their operations run smoothly,” said Bart Van der Stockt, president of Unilin Technologies. “With this agreement, we ensured that our licensees and partners can use the SPC name without fear and move forward with confidence to focus on their core business.”
Similarly, Välinge also announced that it had entered into an agreement with i4F related to the use of the “SPC” trademark. “Välinge is pleased to have secured non-assertion rights to the “SPC” trademark,” said Per Nygren, executive vice president, Välinge Innovation. “All current U.S. Customs actions based on the “SPC” trademark labeled with L2C are lifted and it is no longer necessary to conceal the “SPC” name on product packaging for U.S. imports.”
Speaking on behalf of the Resilient Floor Covering Institute, RFCI president and CEO Bill Blackstock commended i4F on its initiative. “We would like to extend our deepest appreciation to i4F for its commitment in supporting the resilient flooring industry and ensuring the term SPC remains available for the entire industry to use to describe its products.”