Empress Hair Care Products has filed a lawsuit against Sean Combs alleging trademark infringement and unfair competition. According to the lawsuit, filed on January 10, 2012, Combs infringed the “Empress” trademark when he used the name for his new women’s fragrance line. According to Empress Hair Care Products, Sean Combs tried to file a trademark for the name “Empress” while knowing that Empress Hair Care Products owned the trademark. The application was rejected and Empress Hair Care Products claims that in February 2010, attorneys from Combs’ Sean John Clothing Company contacted Empress Hair Care Products to obtain permission to use the “Empress” mark in exchange for compensation. Empress Hair Care Products did not enter into an agreement with Sean John nor grant Sean John the right to use the mark. Combs’ proceeded to file a second application to trademark the name “Empress Sean John” but it was also rejected. Finally, Combs’ decided to launch his Sean John Empress perfume in summer 2011.

Under the Lanham Act, the test for trademark infringement is the “likelihood of confusion” among consumers about the origin of the goods or services. 15 U.S.C. §§ 1051–1127. The plaintiff has the burden to first show that it has a protectable trademark right in the mark at issue, and that the defendant is using that mark or a confusingly similar mark in such a way that it will create consumer confusion, mistake, or deception. Consumer confusion can occur when both parties sell similar products, or when it appears that one party is somehow associated, affiliated, or connected with the other party’s products. Here, Empress Hair Care Products holds a trademark right to the name “Empress,” and alleges that Comb’s use of this mark on its products will create consumer confusion as both companies target the same consumers. Empress Hair Care Products sells hair products for African American women, while Sean John’s Empress Perfume and Lotion line will sell perfume and lotion products to women, including African American women.

Courts will analyze an eight-factor test to determine the likelihood of confusion. AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979). The eight factors are: (1) similarity of the overall impression created by the two marks (including the marks’ look, phonetic similarities, and underlying meanings), (2) similarity of the goods and services involved (including marketing channels), (3) the strength of the plaintiff’s mark, (4) evidence of actual confusion by consumers, (5) Defendant’s intent, (6) physical proximity of the goods, (7) degree of care likely to be exercised by the consumer, and (8) the likelihood of expansion of the product lines. There is no exact formula to determine whether an infringement as occurred, as Courts give different weight to each of the factors. For instance, both parties can have the same mark in the same geographic area without trademark infringement occurring, so long as the goods or services of the parties are sufficiently dissimilar. Here, both products are dissimilar in that Empress Hair Care sells hair products and Sean John is currently selling perfume. However, both products are still in the same cosmetics & beauty industry and may not be sufficiently dissimilar to allow the defendant to continue using the name “Empress.” In addition, the products are so closely connected in the cosmetics & beauty industry that a likelihood of expansion of the product lines may exist.

A defendant in a trademark infringement claim can assert two affirmative defenses: fair use or parody. A fair use defense can be used when a descriptive mark is used, in good faith, for its primary meaning, and no consumer confusion is likely to result. According to the Merriam- Webster Dictionary, the term “Empress” is defined as “the wife or widow of an emperor,” or “a woman who is the sovereign or supreme monarch of an empire.” Here, the mark “Empress” is not used as a descriptive mark as it does not describe the product. Parody occurs when the defendant uses the plaintiff’s mark or a similar mark with deliberate exaggeration for comic effect or ridicule. This defense does not apply here either. Sean John’s only defense would be to argue that both products are not in the same market, that there will be no consumer confusion, and that there is no likelihood of expansion for either party. Empress Hair Care will be successful in its claim against Sean John if it can show Sean John infringed on its trademark and that the likelihood of consumer confusion exists.

Design Patents are underutilized in the Fashion Industry.  While many in the Industry intellectually understand that Design Patents protect unique fashion designs (e.g. for clothing and accessories), they nevertheless seem to prefer Intellectual Property protection based on copyright, trademark, and trade dress, leaving Design Patents underutilized.  This is because, like Urban Myths, there lingers in some corners of the Fashion Industry three outdated beliefs about Design Patents, i.e.: (i) Design Patent applications take so long to process they aren’t useful by the time they issue; (ii) Design Patents are expensive; and (iii) Design Patents are difficult to enforce.  This blog note will demonstrate why the three (3) preceding beliefs are no longer true, state three (3) up-to-date beliefs that are true, and end by encouraging use of Design Patents.

Here are three up-to-date truths about Design Patents:

(1)  Design Patents are often quickly obtainable

While Utility Patents usually take two, three or more years to be obtained, Design Patents can be obtained relatively quickly.  Indeed, for the last two years, over half of Design Patent applications issued as Design Patents within one year of the application filing date.  What’s more, techniques exist which enable knowledgeable patent counsel to have some Design Patent applications allowed more quickly than average.

(2)  Design Patents are relatively inexpensive, and can be quite cost-effective

The average initial cost of preparing and filing a simple Design Patent is estimated to be between two and five thousand dollars (depending on design complexity); this is inexpensive relative to many common necessary business expenditures.  While the investment in a Design Patent may not be warranted for every item, a consultation with qualified Patent Counsel will show that a Design Patent application is a worthwhile investment for many, if not all, items.  And once the investment is made, and a Design Patent has been obtained, no further payments are necessary; unlike Utility Patents, Design Patents don’t require periodic payment post-issuance “maintenance fees” to remain in effect.

(3)  Design Patents are straightforwardly enforceable. (‘Now more than ever’).

In the not-so-distant past (before 2008’s “Egyptian Goddess” decision) (Egyptian Goddess, Inc. v. Swisa, Inc., (Fed. Cir. 2008), proving Design Patent Infringement was more difficult than it is today.  Suffice it to say that, nowadays, proving Design Patent Infringement essentially requires only proving that the two designs (i.e. the design covered by the Design Patent and the design accused of infringing the Design Patent), taken as a whole, are substantially similar such that an ordinary observer (e.g., the consumer) would be deceived to purchase one design believing it to be the other. Thus, nowadays, an issued Design Patent is less of an abstract threat, and more of a practical deterrent to would-be copiers, than it was in the not-so-distant past.  (Indeed, even before the Design Patent issues, merely applying for it enables one to mark items as “Patent Pending”; this marking alone has a deterrent effect on would-becopiers).

Future blog posts will further elaborate on the advantages provided by Design Patents.  For now, however, the author trusts that this post has achieved its goal of convincing the reader that: (1) Design Patents are often quickly obtainable; (2) Design Patents are relatively inexpensive, and can be quite cost-effective; and (3) Design Patents are straightforwardly enforceable, and deter others from copying, thereby preventing the holder of the Design Patent from losing revenue to those who would have engaged in copying but for the existence of the Design Patent.  Thus, Design Patents increase the bottom line of their owners.

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Joseph F. Murphy, Jr. is currently a Registered Patent Attorney, and Chairs the Fashion Law Subcommittee of the New York County Lawyers Association (NYCLA). He is a 1992 graduate of the IP-focused Franklin Pierce Law Center, which has since become the Law School of the University of New Hampshire. He is a 1987 graduate of Marquette University, where he obtained a B.S. in Electrical Engineering. His past academic work includes guest lecturing on Fashion Law at the Fashion Institute of Technology, and teaching “Valuation of Intellectual Property” at NYU as an adjunct Professor. He is the Managing Editor at www.fashionlawcenter.com ; his law practice is described at www.joemurphy.com.

As previously reported by CaseClothesed’s Melanie Perez, Kardashian’s lawsuit claims that Old Navy intentionally cast a Kim look-a-like, creating confusion as to whether Kardashian is affiliated with the retailer, thus violating Kardashian’s rights to her name and likeness. Attorneys for Old Navy’s parent company, The Gap, have hit back by launching an investigation into Kardashian’s “reputation.” The Gap attorneys plan to examine the reality TV star’s actual financial benefit to a brand, including probing into Kardashian’s failed relationship with Bebe and Sears marking down Kardashian-branded apparel even during pre-sales.

Stay tuned; it sounds like the intellectual property mudslinging has just begun.

Swatch Group’s bid to slacken the deliveries of mechanical movements and their components to rival watchmakers. was granted by A Swiss court on December 19, 20011. Nine companies, including luxury watch brands Frédérique Constant and Raymond Weil, in addition to movement manufacturer Sellita unsuccessfully appealed in the Federal Administrative Court in Bern against a ruling by Switzerland’s competition regulator in June that authorizes Swatch Group, the world’s largest watchmaker, to reduce its supply of parts in 2012.   Read More

The plaintiffs grounded their appeal on the strain the reduction would place on smaller businesses, “The court’s decision left independent brands with no choice but to produce the parts themselves” Peter Stas, co-founder and chief executive officer of Frédérique Constant said, “This is going to take years, so before 2014, 2015, there is no solution, and it is for this period in between that normally companies like ourselves, the smaller ones, are protected.”

But for Swatch, the reduction would help bolster their own brand by enabling them to channel the movements it produces for its own brands like Longines, Omega and Breguet, in addition to charging a higher price for its movements. However, because of Swatch’s domination in the market, supplying 70% to 80% of to the Swiss watch industry’s movements, it would violate the Swiss Cartel Act if it were to independently terminate the supply.

Under the agreement, Swatch can next year reduce the supply of movements to 85% and other components to 95% of 2010 levels, while the competition commission carries out an investigation. Swiss Competition Authority deputy director Patrik Ducrey said the investigation was still ongoing, and would likely be concluded in the second half of 2012.

Swatch Chief Executive Nick Hayek said the decision to reduce supply would strengthen, not weaken the industry. “We do not want to be a supermarket, forced to deliver to everyone whatever they want. The supermarket era is coming to an end,” he told Dow Jones Newswires.

Dec. 20, 2011 The Tommy Hilfiger Group, which is wholly owned by PVH Corp. (NYSE: PVH), announced an agreement with Ittierre S.p.A to license the men’s and women’s runway collections beginning Fall 2012 and pre-collections Spring 2013. While Tommy Hilfiger retains creative control over all collections, Ittierre will have the rights to produce and distribute apparel and the majority of accessories, with distribution concentrated in Europe, North America and Asia.

In addition to Tommy Hilfiger retails stores, the agreement will allow for high-end wholesale , and specialty and online retailers to distribute runway collections. Following presentations during New York Fashion Week in February 2012, the collections will be sold in six showrooms throughout Europe, North America and Asia.

“We are thrilled to enter into this licensing agreement with Ittierre, which will allow us to broaden our upper tier global distribution,” said Fred Gehring, Chief Executive Officer of The Tommy Hilfiger Group. “Over the past few years, the successful repositioning and elevation of the brand has led to an increase in the demand for our runway collections. Partnering with Ittierre is a wonderful opportunity to reach new customers and to further evolve our most elevated expression of preppy American classics with a twist. We look forward to building on the brand’s current momentum with Ittierre, a partner that is renowned for their passion and capability to manage the manufacturing and distribution of designer collections on a global scale.”

Antonio Bianchi, Chairman and CEO of Ittierre S.p.A. asserts: “Tommy Hilfiger, the world’s leading Classic American Cool brand, has chosen Ittierre, the representative of “Made in Italy” craftsmanship and excellence in the fashion industry, as its global partner. We are delighted by this new collaboration with one of the world’s leading designer apparel brands. It is a historic event that enhances the global reputation of Ittierre and rewards the dedication of our management team, headed by General Manager Alessandro Locatelli. This new important license, the fifth awarded in 2011 and tenth overall in Ittierre’s portfolio, marks a fantastic close of year for the Company.” The first collection distributed under the licensing agreement will be in stores July 2012.

Sara Alexandre

Would you ever mistake a turkey club sandwich for a Rolex watch? Luxury watch brand Rolex doesn’t want to take the chance that you will. Rolex Deli, a café located in Brooklyn, New York, is now facing a trademark infringement lawsuit filed in Manhattan by Rolex, who claims the deli’s name gives the “false impression that defendants and their services and goods are in some way affiliated with Rolex”. Rolex claims the deli’s owner Shawqu Ali has purposefully chosen the name to confuse passers-by, and that the deli threatens to “dilute the distinctiveness of the Rolex trademark.”..Read More

Ali told the New York Post that there was nothing Rolex-related on the menu. The State Division of Corporations apparently approved the name before he opened four months ago but Rolex now expects Ali to pay unspecified damages, change the deli’s name and “immediately destroy any and all signs, posters, advertising, promotional or marketing materials or supplies” related to the Rolex name. Ali estimates it will cost “at least USD 30,000” to change his signage and store facade. Though he has vowed to fight, he says the issue has made him lose respect for the brand. His enthusiasm for the Rolex brand has understandably dampened, “I’ll have to sell my Rolexes now.”

Buccellati v. Buccellati

Sara Alexandre

It doesn’t take much energy to peel off names of entertainers or entrepreneurs who share the last names of other famous and/or successful relatives. And, so what if they used the connection as a springboard? Isn’t it the right of any one of us to use our own name? Well, not if you are Laura Buccellati. The grandniece of Mario Buccellati, the company founder of Bucellati, the upscale jewelry and watch maker, is facing a trademark infringement lawsuit on December 23, brought by the company. Claiming trademark dilution, false designation of origin, unfair competition and unfair deceptive trade practices, the plaintiff is seeking injunctive relief, damages, attorney’s fees and investigatory costs.  Read More

According to the plaintiff, the bag designer has allegedly used her own trademarked name to falsely imply her company’s association with her family’s business. The complaint states that Laura Buccellati’s trademarks used on handbags, carryalls, purses, wallets, belts and scarves, are “imitations” of the Buccellati marks. To reinforce their contention, the plaintiffs cite an excerpt from laurabuccellati.com, in which the defendant writes that her “collection of fine leather accessories follows in the footsteps of her family’s tradition of excellence and impeccable craftsmanship.”

The company is indignant about what they believe is an attempt by Laura Buccellati to once again try and “capitalize on the popularity” of her last name. Back in 1989, Ms. Buccellati sold her entire interest in the Buccellati companies in 1989. However, subsequent to that, the designer, along with Lilian Azel, co-founder of Laura Buccellati, “attempted to register trademarks comprising of/containing the name Laura Buccellati, both in the United States and internationally,” the suit said. Registration for the U.S. marks was denied, and the designer commenced an opposition proceeding against Buccellati that is currently pending before the U.S. Patent and Trademark Office.

It was reported that while some designers are very willing to voice their opinions and support certain political parties other designers are wary of such actions.  Design houses do not want to alienate themselves from consumers from the opposite party.  LVMH Moet Hennessy Louis Vuitton has discouraged their brands from supporting the initiative.  Marc Jacobs, who is owned largely by LVMH has ignored this warning and has designed t-shirts to be sold.  Donna Karan, a well-known Obama supporter has declined to participate as per their owners opinion.

Anna Wintour is no stranger to the campaign efforts of the Democratic Party, and has been known to host many events for President Obama, and his reelection campaign.

Candidates will always welcome campaign money, it is when “celebrities” think that they have any influence on the result is when it becomes obnoxious.

Another Victory for the Bratz Doll Collection

Sara Alexandre

Bernard Belair, Brooklyn artist and photographer, has a had knack for creating “physically distorted women”, Boing Boing reports, and in the late 90s he registered his design which became popular with the Steve Maddan brand as an advertisement in Seventeen Magazine.  That particular ad went on to inspire Margaret Leahy, a sculptor, used that advertisement as the basis for the beginning of Bratz dolls, a line of dolls with exaggerated features and proportions that are marketed to girls between the ages of 4-8.  Read More

The dolls were a mega hit, and Belair commenced a lawsuit in 2009 against the owner of Bratz, MGA Entertainment Inc., because, he believes that the look of MGA’s Bratz dolls has infringed on the copyright he believes emanates from his work used in the Steve Madden ads. 

The court found that the no elements specific to the original Belair image remained look of the dolls, “Although the Bratz dolls may indeed bring to mind the image that Belair created, Belair cannot monopolize the abstract concept of an absurdly large-headed, long limbed, attractive, fashionable woman,” Judge Shira A. Scheindlin wrote. “He has a copyright over the expressions of that idea as they are specifically articulated … but he may not prevent others from expressing the same idea in their different ways.”

“In the context of toys, and particularly toys that replicate human or quasi-human forms, differences in physical features, clothing, and accoutrements matter,” Scheindlin wrote. “It is undisputed that MGA was aware of the Steve Madden look and sought to capitalize on it. But that is not enough to justify a finding of infringement. Stirring one’s memory of a copyrighted character is not the same as appearing to be substantially similar to that character, and only the latter is infringement.”

Bratz dolls have a history of legal battles, of course, between MGA and rival dollmaker Mattel. Earlier this year, the parties returned to court in January to renew their battle over who owns Bratz, with accusations of trade secrets being stolen.

In April a federal jury returned a verdict against Mattel and supporting MGA. In July, MGA rebooted the Bratz brand, while in August, Mattel was duly ordered to pay MGA $310 million for attorney fees, stealing trade secrets, and false claims rather than the $88.5 million issued in April.

NAD is tightening the rules in order to prevent consumers being misled by the unfulfilled promises in ads. The reason for the most recent action is because of Procter & Gamble’s CoverGirl mascara ad that promised to pump up the volume of lashes, but the small print included a disclaimer that the model’s lashes were enhanced after the photo was taken. Proctor & Gamble promised to ban the ad, even though the ad disclosed that the ad was enhanced.

Advertisers who refuse to stop using or fix their misleading ads will possibly be fined, sued or enjoined by the NAD.

NAD director Andrea Levine said “You can’t use a photograph to demonstrate how a cosmetic will look after it is applied to a woman’s face and then – in the mice type – have a disclosure that says ‘okay, not really.’”

The main concerns in Photoshopped ads are the implied messages to consumers that the results will occur from using the product and only the product, without any post-production enhancement.  It is well-established that product demonstrations in advertisements must be truthful and accurate and cannot be enhanced. NAD announced that they are taking similar action to their British counterpart. FTC has also tightened their rules to hold celebrities accountable if they make claims in ads that they know cannot be true.

Additional rules the FTC recently added include the following:

- Advertisement that feature a consumer and convey his or her experience with a product or service as typical when that is not the case will be required to clearly disclose the results that consumers can generally exepect

-”Material Connections” between advertisers and endorsers must be disclosed

All of the new rules are trying to encourage advertisers to get back to reality.