Inspiration? Trademark Infringement? The terms may just be interchangeable…
Check out this March 31, 2010 New York Times article about Franklin & Marshall. I bet you thought I was talking about the small liberal arts college in Lancaster, Pennsylvania. Well, sort of, but I am ALSO talking about the Italian clothing line with the same name launched in 1999 by Italian entrepreneurs, Giuseppe Albarelli and Andrea Pensiero. According to the article they found a worn out Franklin & Marshall sweatshirt in a secondhand shop in London and created an entire line around it, allegedly BEFORE they discovered it was an actual college in the United States.
The article misstates the legal rights that the college has, claiming that it owns a U.S. copyright in the name, but FRANKLIN & MARSHALL is actually protected as a registered U.S. trademark in classes 018 and 025 (Reg. No. 2739509). At least the Italian apparel entrepreneurs have done right by the college after discovering their snafu. A bit of buzz was generated when country singer, Tim McGraw was photographed in a t-shirt from the clothing line in 2003 and the secret was out. The college and the clothing line reached a long term licensing deal under which the clothing line can continue to use the trademark and the college receives a portion of all U.S. sales, since it only owns a registered trademark in the U.S. Because of its incredible success in Europe, the clothing line has also set up a $100,000 scholarship to pay the tuition bill for one lucky F&M student.
As the article also mentions, the clothing in this line reminds me of the gear sold by quite a few American brands like Abercrombie & Fitch, Hollister, and American Eagle. By now I’m sure that I don’t have to tell you that none of these companies have an action for trademark infringement against the Italian brand. WHY… because clothing designs DO NOT qualify for trademark protection in the U.S.
BUT, what if one of these brands had a registration in one of the European countries that offer IP protection for clothing designs? For example, Article L. 112-2 of the French Intellectual Property Code, which lists the categories of works protected by the code, includes the clause, “creations of the seasonal industries of dress and articles of fashion. Industries which, by reason of the demands of fashion, frequently renew the form of their products, particularly the making of dresses, furs, underwear, embroidery, fashion, shoes, gloves, leather goods, the manufacture of fabrics of striking novelty or of special use in high fashion dressmaking, the products of manufacturers of articles of fashion and of footwear and the manufacture of fabrics for upholstery shall be deemed to be seasonal industries.” Can one of these companies be liable for infringement in France?
Has anyone ever been to F&M Patio Bar in New Orleans, LA? It’s one of my all-time favorites, being a graduate of Tulane University (best cheese fries ever). I can assure you that it hasn’t registered its name or logo with the USPTO (I checked), but do you think the bar has rights in “F&M”? Does it have a cause of action against any or all of these apparel companies… or the college? Well, if it hasn’t registered with the USPTO, then it does not have federal (nationwide) trademark rights, so any trademark rights it does have are limited to common law or state rights (i.e. in Louisiana). Even if the bar had filed a registration with the USPTO, it would still probably not win an infringement action because the mark would be registered under a different class. All goods and services are divided into 45 International Classes as agreed upon by WIPO. When you file for registration you have to indicate each class that covers your goods or services. In most cases if someone else is using the same or a similar mark as yours in a DIFFERENT class, the USPTO, and ultimately, the court, will allow both of you to use the mark. What happens if F&M Patio Bar sells t-shirts with it logo? Just in Louisiana? Online…all over the U.S.? I think that discussion is going to have to be for another time…
