By Jose Landivar
Editor, Arther Law’s Industry Insider
Jay-Z’s Rocawear brand was sued on Monday by Hood Love, LLC a Jersey-based, for-profit company, which according to its website, is focused on the development of poverty stricken communities. The suit claims that Rocawear is selling merchandise that infringes on its “Hood Love” trademark and accuses Rocawear of misappropriating the Hood Love trademark to promote and sell apparel on its website. Read More…
Last year around October Kate Spade announced their plans for diffusion line, Kate Spade Saturday, a fun contemporary women’s lifestyle brand. Saturdays Surf NYC a men’s ready-to-wear and accessories line wasn’t too thrilled about the news and alleged the diffusion brand was too similar in terms of the name, branding, and marketing. Furthermore Saturdays Surf NYC is often called Saturdays and Kate Spade Saturday is often referred to as Saturday. This led to concerns of the likelihood of customer confusion as Saturdays Surf NYC expands into new markets. Needless to say, the two companies ended up in court after Kate Spade in response to a cease and desist letter from Saturday Surf NYC to stop the launch, chose to continue forward. Whether Kate Spade would be liable for trademark infringement was the big question.
Fast forward a little bit and we can report that the battle is over (for now). Kate Spade has come out on top and has won the legal dispute regarding the brand name and logo for the new Kate Spade Saturday line. In her ruling, Judge Miriam Goldman concluded “Saturdays Surf NYC has not shown a likelihood of confusion by a preponderance of the credible evidence. I am particularly persuaded by the relative weakness of the word that the two marks share, the significant distance between the men’s and women’s products, and the consistent inclusion of the famous house mark, Kate Spade, in its Kate Spade Saturday mark.”
Kate Spade believes that both brands can exist in the marketplace in harmony – the Kate Spade Saturday brand focuses strictly on womenswear and the main focus of Saturdays Surf NYC is on menswear. Although this decision certainly comes as a disappointment to Saturday’s Surf NYC, they have plans to consider other legal options and will continue to focus their efforts in designing and selling fashion forward clothing and expanding the brand.
So what is your take on these two brands? Would you get the two confused? Let us know your thoughts.
By: Amelia Wong
On March 12, 2013, a New York federal judge held that the Court did not have jurisdiction over the foreign entity Bella International Ltd. (Bella), a Hong Kong-based retailer, to ban Bella from selling alleged counterfeit Juicy Couture Inc. (Juicy) items on its Hong Kong website. The Court’s rationale was that Bella did not have enough ties to the United States for the Court to have jurisdiction over Bella.
Juicy first filed the Hong Kong suit against Bella in 2008, alleging trademark infringement because Bella sold “Juicy Girl” clothing and accessories. Juicy brought the U.S. action in July 2012 alleging that Bella violated U.S. and New York law by selling $3000 worth of Juicy Girl to U.S. consumers, some of which were Juicy Couture’s investigators.
Juicy sought an injunction to enjoin Bella from counterfeiting and infringing the Juicy mark. While Juicy was successful in obtaining a preliminary injunction to enjoin Bella from selling the goods to U.S. customers, the Court declined to exercise extraterritorial judgment over Bella’s foreign activities. The Court found that infringement was likely to exist because of the public recognition and strength of the Juicy mark. Additionally, the Court declined to exercise extraterritorial judgment because Bella’s activities in the U.S. were not enough to give an American court jurisdiction. The website only sold $3000 worth of merchandise to U.S. customers and U.S. customers were not its biggest target.
Judge Ronnie Abrams stated, “The strength of the plaintiff’s marks, similarities of parties marks and competitive proximity…all strongly favor the plaintiff…However, the court concludes that the Lanham Act should not be applied extraterritorially…to any other websites hosted abroad.” Judge Abrams further stated that the Hong Kong action would determine whether the Juicy Girl mark was enforceable in Hong Kong.
Juicy’s representative was pleased that the court recognized Juicy’s trademark and believed it was a good direction. Juicy is currently taking action against defendants in Hong Kong and Canada, believing that the Court’s trademark recognition would play a strong role in future cases.
Judge Abram’s decision is significant because she refused to apply the Lanham Act to a foreign company and left it up to the Hong Kong courts to decide. This could be viewed as a weakness because “Juicy Girl” items are still available on .hk websites. If trademark infringing items are allowed to be sold on international websites, U.S. consumers can still access these websites and purchase the items through E-commerce. Due to the fast-paced nature of technology and E-commerce, Judge Abram’s decision could instead be seen as a setback to trademark protection.
By, Kevin Kehrli
On January 9th, 2013, the Supreme Court decided a trademark matter that may have implications that go far beyond the parties involved. Already v. Nike involved one of Nike’s most popular line of shoes, Air Force 1s, and its trademark. Nike sued Already L.L.C., alleging that two lines of the company’s shoes, “Soulja Boys” and “Sugars,” infringed and diluted the Air Force 1 trademark. Already denied the infringement, and counterclaimed that the Air Force 1 trademark is invalid. Four months after the counterclaim, likely worried about the prospect of losing its trademark in its Air Force 1 line, Nike’s attorneys issued a “Covenant Not to Sue,” stating that Already’s actions no longer “infringe or dilute the NIKE Mark at a level sufficient to warrant the substantial time and expense of continued litigation.” The covenant also contained provisions in which Nike promised that it “would not raise against Already or any affiliated entity any trademark or unfair competition claim based on any of Already’s existing footwear designs, or any future Already designs that constituted a ‘colorable imitation’ of Already’s current products.” SC Slip Op p. 2. Nike then moved to dismiss its own claims with prejudice and Already’s claims without prejudice, claiming that the covenant had extinguished the case or controversy.
Already sought to pursue the claim based on three arguments. First, Already offered evidence that it planned on introducing new versions of its shoe line into the market. Next, it presented affidavits showing that potential investors would not consider investment unless Nike’s trademark is invalidated. Finally, it claimed that “Nike had intimidated retailers into refusing to carry Already’s shoes.” SC Slip Op. 2. The District Court dismissed Already’s counterclaim, finding that the covenant was written broadly enough to protect the new versions as “colorable imitations” and that Already did not produce evidence to show that they planned to develop any shoes that would not be covered by the covenant. Therefore, it “held there was no longer ‘a substantial controversy . . . of sufficient immediacy and reality to warrant the issuance of a declaratory judgment’.” Slip op p. 3. (quoting Med-Immune, Inc. v. Genentech, Inc., 549 U.S. 118, 127 (2007)). The Second Circuit affirmed, but added factors to guide courts in their assessment of whether or not a covenant “eliminates a justiciable case or controversy.” Slip op 3. While ultimately it is a “totality of the circumstances” determination, the Second Circuit stated that courts should look to “the language of the covenant, whether the covenant covers future, as well as past, activity and products, and evidence of intention . . . on the part of the party asserting jurisdiction to engage in conduct not covered by the covenant.”
In its opinion, the Supreme Court applied the “voluntary cessation doctrine,” which imposes a “formidable burden of showing that it is absolutely clear the alleged wrongful behavior could not be expected to recur.” Slip Op. 4 (quoting Friends of the Earth, Inc. v. Laidlaw Environment Services (TOC), Inc., 455 U.S. 283, 289 (1982)).
In finding that the covenant meets this formidable burden, the Supreme Court listed several factors as influential. First, it is “unconditional and irrevocable.” Next, it extends beyond legal protection and “prohibits Nike from making any claim or any demand.” It also grants protection to Already’s distributors and customers. And finally, it covers any colorable imitations, protecting previous, present, and future designs.
The first notable point from this case is the long-term risk involved when a party issues a covenant that meets this formidable burden. While Nike likely granted this covenant because it was worried about preserving the validity of the Air Force 1 trademark, the company is now at risk of serious trademark dilution. Because of the extreme breadth required for such a covenant to moot litigation, Already and its distributors essentially have free reign to develop products similar to Air Force 1s without the worry of Nike taking any action against them. Even worse for Nike, the covenant is irrevocable and indefinite. It remains to be seen whether Already will push the limits of this covenant, but if they do, it will be interesting to see how both Nike and the courts approach the situation.
This holding also represents a major victory for trademark holders. If the Supreme Court had held that such a covenant did not moot the counterclaim for trademark validity, trademark holders would have to take into account that when filing an infringement suit, they would face the risk of having the status of their trademark questioned with no means to dismiss it.
Further, the Court’s reasoning and Justice Kennedy’s concurrence will have strategic implications for parties defending against trademark infringement claims. Because the burden of showing that the covenant was broad enough fell upon Nike, as emphasized by Justice Kennedy, Already’s answer and counterclaim should have focused on showing that they were developing products that would fall in “the grey area” outside the scope of such a covenant, but within the scope of non-infringement. Obviously, Already did not expect Nike to make the strategic move of granting the covenant, but it is now essential for those who plan to defend an infringement claim with a counterclaim for invalidity to take this into account. More specifically, a party should attempt to show that they plan to develop products that would fall into a grey area of coverage if such a covenant is granted. Doing so could be beneficial in two ways. First, it would make the original claimant’s burden more difficult, thus increasing the likelihood that the court would find that a justiciable case or controversy remains. Alternatively, the original claimant who meets this burden would have to create an even broader covenant than it would have done if the answer and counterclaims did not include such information.
Finally, the Court’s broad language in its opinion leaves open the possibility that the logic applied here may extend beyond trademark litigation. Particularly, the Court stated that “allowing Nike to unilaterally moot the case “subverts” the important role federal courts play in the administration of federal patent and trademark law.” Slip op. p. 12. It follows, then, that if a patent holder files an infringement suit, which is countered by a challenge to the patent in question, a patent-holder looking to moot the case, should keep this substantial burden placed on Nike in mind if issuing a covenant not to sue.
By, Alex O’Sullivan-Pierce
That’s right, just weeks after the birth of their first child music icons and former renegades, Jay and Bey, are seeking the protection of the United States Government. But it’s not from the FBI, CIA nor the DEA. It is the USPTO- the United States Patent and Trademark Office.
In a seemingly reactive maneuver, the celebrity couple successfully registered a federally protected trademark for their infant’s name, “Blue Ivy Carter.” The mark claims control over the use of the name in relation to a wide variety of goods and services including…
By: Alison Parker
The latest Kardashian drama actually doesn’t involve Kris Humphries or Khloe assaulting a transgender woman, but it involves something the sisters are adored for–their eyelashes.
The sisters are threatening legal action against Sarah Ehrlich, the maker of an eyelash elongation product, because she has filed a petition to trademark the name “KardashianLash.” Apparently Ms. Ehrlich spoke to TMZ and told them that she wanted to use KardashianLash to help raise money to send Honduran orphans to cosmetology school and that she didn’t think the Kardashian sisters would mind. And not only do the Kardashian’s mind, they claim that she is infringing on their trademark and they will do whatever it takes to get her to stop.