Botany term at root of lawsuit

Xy-lem (zi’lem) n. 1. The woody vascular tissue of a plant that transports water. 2. The basis of a lawsuit.

When Hal Weinstein set about naming his Roswell bath and plumbing products business in 2005, the word “xylem” appealed to the former biology major.

“It seemed to fit what we were doing,” he said, noting the connection between plumbing and the vascular system in plants.

He also thought it unique, he said. So he was surprised when he heard last year that ITT Corp. was going to name one of its spinoff companies Xylem.

That the spinoff Xylem would operate a water technology business — sounded close enough to the plumbing business — baffled Weinstein.

“We were incredulous,” he said.

Attorneys for his Xylem Group LLC (the Georgia plumbing company) contacted attorneys for Xylem Inc. (the ITT company) and demanded that they drop the name. Weinstein had trademarked it years before and used it in building what he said is a nearly $10 million business with 16 employees in the U.S. and China.

But Xylem Inc. went ahead with the name. In October, it filed suit in U.S. District Court in Atlanta, seeking judgment that its use of the name does not infringe on Xylem Group trademark.

Weinstein countered, seeking a permanent injunction to stop Xylem Inc. from using the name and seeking damages.

According to court filings, the dispute centers on whether both companies using the same name will cause confusion in the marketplace.

Xylem Inc. said it won’t.

Spokesman Tom Glover issued a statement: “Xylem is not in the bath fixtures industry. Our products, customers and channels of trade are very different from those of Xylem Group LLC. Because there is no reasonable likelihood of confusion between the companies, trademark law clearly allows us to use the name Xylem. Our legal action is an effort to bring this matter to closure as expeditiously as possible for the sake of both parties.”

Glover added that Xylem Inc. did its due diligence on use of the word as a business name beforehand.

A Google search shows the word is also used in other business names for products from guitars to mulch.

Weinstein said there has already been confusion between Xylem Inc. and Xylem Group. He’s been getting, he said, mail and other communications intended for Xylem Inc., and vice versa. Customer payments have also crossed between the two companies, he said.

To most people, Weinstein said, Xylem Inc. products and Xylem Group products both involve plumbing, resulting in marketplace confusion.

Said Weinstein: “They think that just because they don’t make the exact same thing, it’s OK. But we spent years developing this name in the industry. We just want them to stop using our name.”