Protecting the integrity of the American Petroleum Institute's engine oil certification program

Finnegan client American Petroleum Institute (API) entered into a settlement agreement—the latest in a series of enforcement actions to protect the integrity of API’s engine oil certification program that Finnegan has handled for API. The lawsuit alleged that Tailor Made Oil and its owners, William and Rebecca Selkirk, had falsely claimed their engine oil had been licensed by API to use the API engine oil quality certification marks that denote an oil meets the stringent API engine oil performance standards. The defendants admitted that they counterfeited API’s engine oil quality certification marks and made false performance claims for Tailor Made-branded engine oil sold to consumers and multiple branches of the military. As part of the settlement, Tailor Made Oil agreed to a 10-year ban on bottling or marketing any engine oil for diesel engines and for use in gasoline engines in cars, vans, trucks, and motorcycles. They also agreed to pay API’s costs in this litigation. API initially engaged Finnegan to obtain and test a variety falsely labeled engine oil products manufactured by a number of different businesses. After the test results confirmed that the engine oils did not meet API standards as claimed, Finnegan then launched a multipart, simultaneous attack on these businesses and individuals, filing counterfeiting, trademark infringement, and false advertising claims against twelve defendants in two different federal courts. Finnegan also coordinated efforts to apprise the U.S. Navy of the infringement because our investigation uncovered significant sales of falsely labeled products to naval and marine bases in the United States and abroad. Finnegan was able to obtain multiple preliminary and/or permanent injunctions against the defendants in all of these cases. Ultimately, each of the defendants capitulated and agreed to settlement.