Trending Trademarks

Update on Varsity Brands et al v. Star Athletica

Posted by Lawrence Robins on November 2, 2016 at 3:07 PM

Back in September 2015, we wrote about Varsity Brands et al. v. Star Athletica after the Sixth Circuit ruled that the decorative chevron designs on cheerleading uniforms are eligible for copyright protection

The case has gone all the way to the Supreme Court, which heard oral arguments on October 31. Sullivan & Worcester Partner Larry Robins weighed in on the implications of the case in the recent Bloomberg BNA Patent, Trademark & Copyright Journal article below. 

Read Bloomberg BNA Article

Read about the Sixth Circuit Decision

 

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Topics: Sports, Supreme Court, Copyright, Litigation, Decisions, Fashion, Consumer Products

Is that a “Tiffany?”: Consumers get little credit in recent court decision

Posted by Valerie Sussman on September 16, 2015 at 5:46 AM

After a court battle spanning more than two years, the US District Court for the Southern District of New York recently confirmed that to sell a ring of a style described as “Tiffany,” its maker must be Tiffany & Co. At issue was the word “Tiffany” posted in Costco’s display cases next to a series of diamond rings sold by the discount superstore. Was “Tiffany” a generic word for a six-pronged ring setting as Costco argued, or did it confuse consumers into thinking the rings were authentic Tiffany products?

A trademark becomes generic and loses legal protection when the meaning of the mark becomes associated with an entire market of products rather than the brand name. Famous genericized marks include Escalator and Thermos. In this case, despite Costco’s introduction of dictionary entries showing that “Tiffany” has become a generic descriptor of a ring setting, the court held that Costco presented inadequate evidence to show that any generic use of the word “Tiffany” undermined the strength of the Tiffany trademark. Therefore, the use of the word “Tiffany” in the display cases next to six-pronged rings infringed upon Tiffany’s rock-solid trademark rights.

In addition to trademark infringement, the court held that Costco violated the Lanham Act by selling “counterfeit” Tiffany jewelry. For a mark to be counterfeit, the Lanham Act requires that the mark is “spurious” and “identical with, or substantially indistinguishable form, a registered mark.” In addition, the use of the mark must be likely to confuse or deceive the consumer. Costco opined that the appearance and packaging of the rings were simply not confusing. The “Tiffany” trademark was not anywhere on the rings themselves, and the rings were not accompanied by false Tiffany paperwork. Plus, absent was Tiffany’s signature blue packaging and satiny white ribbon. (Coincidentally, that particular color of blue packaging is also trademarked by Tiffany, known for vigorously protecting its trademark rights).

Nevertheless, the court found that the word “Tiffany” on signs in Costco’s display cases exactly where the brand name would typically be located on other Costco products was enough to confuse consumers about the source of the rings. To justify this result, the court cited testimony from six consumers who were dismayed to learn that their rings were not made by Tiffany (including a particularly tearful consumer whose diamond fell out of her Costco ring). This evidence of likely confusion, combined with evidence of Costco’s lack of good faith in the form of damaging emails and photographs suggesting that Costco tried to copy some stylistic elements of Tiffany products, led to Tiffany’s victory on the counterfeiting claim.

The upshot is, if you are about to propose to that special someone, bear in mind that the only place you will be able to get your fiancé a “Tiffany” ring is at Tiffany & Co.

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Topics: Infringement, Trademark, Fashion, Consumer Products

Rah-Rah-©-Boom-Bah! Cheerleading Uniform Designs Win Copyright Protection

Posted by Natalie Lederman on September 3, 2015 at 11:49 AM

Though the U.S. Copyright Act does not currently offer protection for functional aspects of apparel designs, copyright protection does extend to purely decorative features of clothing that can exist independent of their functional aspects. This murky area of copyright law, known as the “Conceptual Separability Doctrine”, was the focus of a recent decision by the Sixth Circuit in Varsity Brands et al. v. Star Athletica. The court ruled that the decorative chevron designs on cheerleading uniforms are eligible for copyright protection.

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Topics: Sports, Copyright, Litigation, Decisions, Fashion, Consumer Products

Fabric So Rich Even Xerox® Can’t Copy It

Posted by Lawrence Robins on February 4, 2015 at 10:04 AM

Knock-off designs remain the bane of the designer’s existence and U.S. law still provides little in the way of intellectual property protection. While many fabric designs meet the threshold of creativity necessary for protection, clothing designs themselves are functional and not subject to copyright or design protection. Thus, a new design that debuts on a Paris runway in January is likely to appear in knock-off form in a discount retail outlet only a short time later.

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Topics: Infringement, Copyright, Fashion

Is it or isn’t it? An app to discern whether your bag’s the real thing.

Posted by Natalie Lederman on December 4, 2014 at 7:02 AM

Recently, Japanese IT company NEC Corp. announced that it is developing an app with image recognition technology that allows its users to determine, in real time, whether or not that long sought-after Hermès Birkin bag is a knock-off or not. Once a target of aggressive piracy itself, NEC created the app in response to the increasing importance of managing the mass production and distribution of products internationally.

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Topics: technology, Infringement, Trademark, Fashion, Consumer Products

Trademarks, The UK, and The Rule of Threes

Posted by Lawrence Robins on August 4, 2014 at 11:45 AM

A couple of weeks ago we wrote about recent European administrative and court cases that ended in bad news for U.S. trademark owners (Perfect Your Foreign Trademark Rights Early or Risk Losing Them Forever). Proving that bad things can happen in threes, UK Judge Colin Birss ruled last week that Victoria’s Secret’s “Pink” brand of lingerie infringes the trademark of Thomas Pink Ltd., a high-end clothier whose flagship store is located in London.

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Topics: Litigation, Fashion, Dilution

When Good Fabergés Go Bad; Luxury Jeweler Sues Brooklyn Banquet Hall For "Shameless" Appropriation Of Its Mark

Posted by Natalie Lederman on June 9, 2014 at 11:32 AM

This week, luxury jeweler Fabergé filed a lawsuit against Brooklyn restaurant Faberge for what it has deemed a "shameless" appropriation of the jeweler’s famous mark and distinctive storefronts.

The original Fabergé was founded in 1842 in St. Petersburg, Russia, and has been most famous historically for designing elaborate jewel-encrusted Fabergé eggs for Russian Tsars and a range of other jewelry and luxury products sold internationally, including in New York. The restaurant/lounge opened last fall in Sheepshead Bay, Brooklyn, New York, and offers a menu of steak, seafood and cocktails.

The complaint, filed in the U.S. District Court for the Eastern District of New York, asserts that Faberge’s restaurant exhibits "an effort to free-ride on the enormous good will" established by the jeweler and simply "confuse[s] consumers and members of the general public."

The restaurant has responded that its name differs from the jeweler’s in that there is no accent on the final 'E' of the name, and the 'A' is shaped like the Eiffel Tower, thus distinguishing the restaurant’s mark from the jeweler’s. Even if the two marks are very similar, or even arguably the same, as we’ve previously discussed here on Trending Trademarks, trademark rights are typically limited to particular classes of goods or services; consequently, companies operating different types of businesses may often use the same trademark simultaneously. The owner of the restaurant rightfully pointed out that the two companies are in completely different and non-competing industries; fine jewelry versus food services.

These, however, may be distinctions without a difference. Owners of marks as famous as Fabergé have broader rights to use and defend their marks, including the right to prevent use of a confusingly similar mark if it is likely to generate confusion among consumers. It is also worth noting the restaurant’s façade, patterned in purple and gold diamonds (depicted above), which bears a striking similarity to the jeweler’s retail boutiques in London and Kiev. Finally, the complaint asserts that the restaurant’s menu “directly and obviously” alludes to the historical legacy of Fabergé (though specific items were not explicitly named). Considered as a whole, these facts could be sufficient evidence to support the restaurant owners’ bad faith and wilful misuse in adopting the name, look and feel of their establishment.

The case is Faberge Ltd. et al. v. Yusufov et al., case number 1:14-cv-03519, in the U.S. District Court for the Eastern District of New York.

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Topics: Infringement, Litigation, Food & Beverage, Fashion, Dilution

Kate Spade Keeps Saturday

Posted by Natalie Lederman on January 7, 2014 at 4:16 AM

The Favorite Apparel Brand’s “Saturday” Mark Does Not Infringe

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Topics: Infringement, Litigation, Fashion

Our Prediction Was Right: Kardashian Sisters’ Make-Up Line Rebrands!

Posted by Natalie Lederman on May 10, 2013 at 12:53 PM

It’s official: in line with our initial prediction, the Kardashians have renamed their makeup brand, initially launched as “Khroma Beauty,” to “Kardashian Beauty” to avoid any potential customer confusion.

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Topics: Infringement, Litigation, Fashion, Consumer Products

Tory Burch Files Infringement Lawsuit against Bluebell Accessories in New York

Posted by Jennifer Major on March 26, 2013 at 10:09 AM

Designer Tory Burch, whose signature TT gold monogram graces the shoes and handbags of well-dressed women everywhere, filed an infringement lawsuit in New York on Friday against Bluebell Accessories, Inc. Burch claims the New York wholesaler sold counterfeit products displaying Burch's monogram via BluebellWholesale.com. According to several media reports, Burch first investigated Bluebell back in November 2012, hiring an investigator to buy knock-off jewelry and sending a cease and desist letter to Bluebell owners Jessica Min and Sung Ki Min. Bluebell apparently withheld details of its business, including sale documentation and supplier lists, and Burch is now suing for an undisclosed amount, claiming trademark counterfeiting, false designation of origin and false descriptions, trademark and copyright infringement, trademark dilution, unfair competition, and injury to business reputation.

This isn’t the first time Burch has gone after counterfeiters for trademark infringement and counterfeiting. In 2011, Burch won $164 million in a suit filed in the U.S. District Court for the Southern District of New York against cybersquatters selling fake Tory Burch merchandise. The offending domain names included DiscountToryBurch.com, CheapToryBurchs.com, and Tory-Burch.us.

That amount was said to be the largest damages award granted to a fashion company in a counterfeiting action. The court didn’t stop there. The cybersquatters’ domain names were shut down and transferred to Burch, who was also granted the right to shut down any other websites the defendants create in the future without having file a subsequent lawsuit. Defendants were ordered to turn over the funds in their PayPal accounts to Burch as partial payment of damages. The court also enjoined Internet Service Providers, domain name registrars and third party selling platforms from providing services to any defendant for use in connection with infringement of Burch’s rights.

A powerhouse in the fashion world, Burch started her designer career creating tunics in her kitchen in 2004. In 2006, the Burch brand exploded with the launch of her most recognizable product, the $195 “Reva” ballet flats. Burch skyrocketed even higher in 2010 when Oprah added the Reva flats to her list of Favorite Things. In January 2013, Forbes magazine estimated Burch’s net worth at $1.0 billion dollars.

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Topics: Infringement, Litigation, Fashion, Dilution

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Trending Trademarks provides comments and analysis on trademark issues affecting the fashion, high-tech, multimedia and consumer products industries.

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