Joan Bellefield Davis’ Post

Check out part 2 of our article on the trademark implications of brand collaborations.

Update - Man City asks High Court to throw out Superdry's trade mark claim over training kit As part of their pleadings Man City rejected Superdry's claims that the use of the Super “Dry” logo on clothing apparel infringed the fashion brand's trademark, rejecting the notion that the difference between the two “may not be noticed by the average consumer.” It is unclear at present whether Man City have sought discharge of the injunction. However, if Man City are confident in their claim they may be content to leave the injunction in place, opting instead to seek an increased payment from Superdry at the conclusion of the proceedings through application of the cross undertaking in damages. This raises the stakes for Superdry considerably. https://lnkd.in/eiAt-sfK #trademarklaw #sportslaw

Pryor Cashman Partner Dyan Finguerra-DuCharme, co-chair of the #IP Group, and Associate Kate Garber, a member of the IP Group, co-wrote an article for WIPR - World IP Review about two key #trademark cases that could impact #fashion brands. In “Why a pair of fashion TM disputes could ‘hamper’ brand protection,” Dyan and Kate look at Coach v Gap and Penn State v Vintage Brand, which “raise issues of whether a junior user can use a brand name on commercial merchandise (that is not a traditional fair use) and avoid liability under the Lanham Act,” and address whether the owner of a word mark can prevent another from using that word in its ordinary meaning on apparel. Both cases may “have serious ramifications for brand enforcement and the licensing industry.”

"Rhode vs. Rhode: A Battle of Brands". Hailey Bieber's skincare brand, Rhode, and New York fashion label Rhode-NYC have settled a trademark dispute that began in June 2022. Rhode-NYC had alleged that Bieber's use of the 'Rhode' name infringed on their trademark, leading to potential consumer confusion due to Bieber's high-profile status. Despite Rhode-NYC's attempts to prevent the use of the name through a preliminary injunction, the court allowed Bieber’s brand to continue operations while the legal battle progressed. The settlement terms remain confidential, but it likely involved compromises from both sides. This case highlights the growing importance of trademark protection, especially with the rise of celebrity-backed brands. It serves as a reminder of the need for thorough trademark searches and the challenges faced by emerging brands against well-established entities. The dispute illustrates the delicate balance between protecting brand identities and fostering market innovation, underlining the complexities of intellectual property law in an increasingly competitive industry. Read the full article by Seema Meena, Rea Parikh & Nitya Sanghavi:  https://lnkd.in/eSbsSstF #LegalArticles #NaikNaikandCo #NNICO #AnandAndNaik #TrademarkDispute #BrandProtection #CelebrityBrands #LegalBattle #IntellectualProperty #BeautyIndustry #HaileyBieber #RhodeSkincare

With NY Fashion Week underway, it seems like a good time to mention my recent article for the New York Law Journal about the importance of non-traditional trademarks to fashion brands. As discussed in the article, "[b]rand identity extends far beyond just a name. Protecting your brand's unique elements is not just a defensive measure—it's a strategic asset." In the article I highlight the importance of protecting unique brand elements like colors, product designs/configurations, and packaging through nontraditional trademarks. Things that convey source or origin to consumers can and should be protected. https://lnkd.in/d9Mkg2mD #IntellectualProperty #TrademarkLaw #Trademarks #FashionIndustry #BrandProtection #NontraditionalTrademarks #OffitKurman

Industria de Diseno Textil, SA, better known as INDITEX and famed for its iconic ZARA brand, one of the largest fashion retailers globally, recently found itself in a trademark dispute in Japan. The bone of contention? A newly proposed trademark, 'LAZARA,' registered by a Japanese entity for clothing and apparel under Class 25. INDITEX challenged this registration, arguing that 'LAZARA' closely mirrors its own 'ZARA' trademark. They contended that the prefix "LA" is merely descriptive and that both trademarks target identical products, potentially confusing consumers and diluting the 'ZARA' brand. INDITEX leaned on three specific provisions of the Japan Trademark Law in its challenge: 1.    Article 4(1)(xi), which guards against the registration of marks that closely resemble existing ones; 2.    Article 4(1)(xv), which protects against trademarks likely to cause consumer confusion; and 3.    Article 4(1)(xix), which prevents trademarks that could be exploited for unfair profit or to inflict harm on an established brand. However, the Japan Patent Office's opposition board brought a different perspective, determining that while 'ZARA' is indeed recognized in the fashion sector, it doesn't rise to the level of prominence INDITEX claimed. The board emphasized that 'LAZARA' should be viewed as a whole, distinguishing it sufficiently in both looks and sound from 'ZARA.' Ultimately, the board found no convincing evidence of potential consumer confusion or malicious intent by the applicant to leverage the fame of the 'ZARA' brand unfairly. As a result, the challenge by INDITEX was unsuccessful, and the opposition was dismissed, allowing 'LAZARA' to proceed with its registration. This case underscores the complexities of trademark law and the stringent proof requirements to demonstrate brand confusion or unfair intentions in the competitive fashion industry.

🚨 Levi's Takes Legal Action—Again! 🚨 Levi's has filed a third lawsuit against Japanese denim brand FullCount and U.S. retailers Franklin & Poe and Standard & Strange, alleging continued trademark infringement. Despite two prior injunctions (from 2009 and 2018), FullCount is accused of repeatedly selling products that infringe on Levi's iconic trademarks, including the Red Tab and Arcuate designs. This lawsuit highlights the importance of vigilant brand protection and enforcing intellectual property rights to safeguard the distinctive elements that make a brand unique. 🛑 Trademarks matter. As this case shows, ignoring previous court orders can lead to serious legal consequences. We'll be keeping an eye on how this unfolds. Read more: https://hubs.la/Q02QLFLY0 #BrandProtection #Trademarks #TrademarkLaw #TrademarkInfringement #Levis #BrandProtection #IPLitigation #Counterfeiting #BrandEnforcement

An interesting case worth watching. Would consumers be confused when entering a GAP store and seeing a 👕 with the word "COACH" on the front? Is this use of "COACH" serving as a source identifier, or is it merely ornamental? There's always an argument to be made for the latter option. What do you think? 💬 From the The Fashion Law note: "In particular, Gap, Inc. will likely assert that its use of the word COACH on the shirts at issue is merely a decorative or ornamental feature of the clothing (potentially aimed at coaches), and not meant to act as an indicator of the source of the goods. In a March 2020 office action, a USPTO examiner alerted counsel for the LVMH-owned fashion brand that “consumers may not perceive larger designs or slogans as trademarks when such matter is prominently displayed across the front of a t-shirt.” On the other hand, “with respect to clothing,” the examiner asserted that “consumers may recognize small designs or discrete wording as trademarks, rather than as merely ornamental features, when located, for example, on the pocket or breast area of a shirt.” #Trademark #GAP

Upcycling in fashion - where used materials are reworked into new, unique items - has grown in popularity. It appeals to cost-conscious consumers and sustainability advocates alike, allowing access to branded items at a lower cost and reducing waste. But upcycling presents legal complexities for brands, especially regarding trademark rights. In this article Huw Cookson, Liam Blackford and Valentina Mazza provide practical takeaways for brand owners, demonstrating ways to protect their trademarks. To read the article in full, click here: https://lnkd.in/e73zkHeJ #FashionLaw #Upcycling #TrademarkLaw #SustainableFashion #BrandProtection #IntellectualProperty

👗👜👠 #Upcycling is one of the latest trends in #fashion, but how can #trademark owners protect their rights against it? In our new article I discuss with Huw Cookson and Liam Blackford the first decisions on this topic and we provide some takeaways to brand owners.