A small company based out of Bartonville is currently in litigation with Fender, a giant in the music industry, over the company’s name.
Patrick Reeves, Mark Dooly and Clem Kwok launched the company, Win-D-Fender, and started selling its titular product about five years ago. The Win-D-Fender product is a small accessory that blocks wind from silencing a flute when being played outside, which Dooly said was nearly impossible. Dooly, a professional woodwinds player and private music teacher, said that nearly 30 years ago, he learned the hard way that you can’t play the flute outside.
“I was at my first gig, an outdoor wine tasting, after learning Latin tunes on the flute,” he said. “I pulled my flute out, a big gust of wind hit me in the face and no sound came out of the instrument. It was incredibly embarrassing.”
The flute, as Dooly explained, has an exposed airstream so when ambient wind touches it, it silences it. Dooly looked for an accessory that could fix the problem, but didn’t find one. Then he met engineers Reeves and Kwok about six years ago, and they worked on creating wind shield prototypes.
“It took us 21 iterations to get it right,” Dooly said. “We found out it also acts as an acoustic monitor, so you can hear yourself better, which can be a problem in a big band. It’s also better for recording because without it, the microphone picks up the airstream.”
The small company became a side job for the three men, and they’ve added a couple new products to the line, while also working on Win-D-Fenders for other instruments in the flute family. They got a trademark on the name, a stylized description of the product, a wind defender.
“We wanted to give it a name synonymous with the product,” Dooly said. “And one rule is that you can’t trademark a description of the product, so we were afraid the normal spelling would not be approved. We kicked around alternative spellings of wind defender, and confusion with the guitar company never even entered our thought process.”
But in June 2021, Kwok received a cease and desist letter from an attorney on behalf of Fender.
“I thought it was fake,” he said. “They said they wanted us to stop using our name, but we filed the trademark in 2017 and registered with the government. We followed all the requirements, the U.S. Patent Trademark Office determined we were worthy of the trademark, so we were really shocked that Fender would ask us to stop.”
In the cease and desist letter, Fender said the way Win-D-Fender sets “Fender” apart in its name, and the fact that the company sells musical instrument accessories, is “likely to used confusion among consumers as to both the source of WDF’s products as well as to an authorized affiliation, connection or sponsorship by or with (Fender).” A Fender spokesperson declined to comment beyond saying that “Fender” is a registered trademark.
Kwok said he’s surprised that Win-D-Fender would even be on the radar of such a large company, and he’d argue that customers won’t confuse the two brands.
“I can’t imagine we’re any threat to them,” he said. “I can’t imagine someone going to buy a guitar and then buys a flute accessory instead.”
When it became “pretty clear that Fender wasn’t going to stop” its legal effort against Win-D-Fender, the Bartonville company hired a lawyer and remain in litigation.
Kwok said a name change would be impossible for the company to continue.
“We’d have a lot of inventory we’d have to throw away, because the name is on the product,” he said. “It would be incredibly expensive.”
The three Win-D-Fender partners think Fender is likely spending hundreds of thousands of dollars to litigate against them, and it’s “destroying our company.”
“We just want them to allow us to use our federally registered trademark,” Kwok said. “I’m scared out of my mind that this will be the end of our company. We took money out of savings and retirement … To have that all be destroyed, that would be devastating.”
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