For years, Polo Ralph Lauren and the U.S. Polo Association have been hooking mallets over the use of their polo player trademarks.
In 1984, the long battle between the U.S. Polo Association and Polo Ralph Lauren began. At the time, a Manhattan federal court granted the USPA permission to use the “double horseman” logo on their merchandise, as long as it would not cause consumer confusion. The USPA’s double jockey logo bears a marked resemblance to Ralph Lauren’s mounted polo player.
The Navajo Nation has been battling Urban Outfitters since 2011 alleging that the apparel and furnishings merchant violated their trademark rights to the name “Navajo”. The controversy started when Urban Outfitters mass-produced more than 20 faux-native items called “Navajo” or “Navaho.” The Natives protested products like the “Hipster Navajo Panty” and the “Navajo Print Flask”.
In early January, Lululemon Athletica lost their appeal to the TTAB over the registration of the wave design shown below.
The TTAB, affirming the decision of the Examining Attorney, held that the wave design was merely an ornamental decoration and that the public would not perceive the applicant’s mark as an indicator of source. The TTAB stated that such a mark could only warrant trademark registration if the applicant could show the mark had inherent or acquired distinctiveness, or that the applicant has used or registered the design in a non-ornamental manner for other goods or services.
Madonna was quite daring when she named her new fragrance. An Australian artist, RJ Williams, recently filed a lawsuit against Madonna because her perfume Truth or Dare logo looks strikingly similar to his registered trademark.
The logos in question are similar, featuring the letter “T” inscribed inside the letter “M.” However, while the Williams’ design features chunky lines and a squat stance, the logo for Madonna’s perfume stands taller and features thin lines. The “t” is also lower case, appearing more like a cross than Williams’ signature logo.
To me, there is nothing more dreamy than Humphrey Bogart; except, perhaps, an image of Bogart in a trench coat. The owner of Bogart’s name and likeness seems to agree and is suing Burberry for posting a picture on Facebook of Mr. Bogart wearing a Burberry trench.
On April 11, 2012, the Department of Commerce released a report that focused on the broad range of industries that benefit from IP, both directly and indirectly. According to Law of Fashion, ‘the report will be used as a tool to help press for intellectual protections in trade negotiations and provide supporting data for the administration’s new International Trade Enforcement Agency, which could bring cases against countries where counterfeiting and digital piracy is rampant.” IP is a key component in our economic growth. It comes as no surprise that IP-intensive industries support the jobs of approximately 40 million workers because the impact of copyright, trademark, and patent protection is inevitably enormous. The Obama Administration’s focus on promoting innovation can trigger a successful, competitive, international market, and by enforcing and protecting IP rights, these IP related industries can continue to support these jobs and contribute to about $5 trillion to U.S. domestic product. The report summary stated, “Without this framework, the creators of intellectual property would tend to lose the economic fruits of their own work, thereby undermining the incentives to undertake the investments necessary to develop the IP in the first place.” Within our Case Clothesed blog, we have seen countless numbers of lawsuits in the fashion industry where creators of IP fight to protect their work so that others cannot benefit off a work that isn’t theirs.
The report identified some of the most IP-intensive industries that use copyright, trademark, and patent protections the most extensively. Electronic shopping & mail-order houses, footwear manufacturing, and clothing stores were among the top trademark-intensive industries with top 100 global brands in 2011. It is clear that the fashion industry thrives off of innovation and incentives to invent and create. While the fashion world is only a mere portion of the IP market, this report puts into perspective just how much IP protection affects commerce throughout the economy.
The full report can be found here.
Dolce & Gabbana (“D&G”), a luxury Italian company, recently filed a trademark infringement suit against Dolce & Banana, a small boutique in Cape Town, South Africa. Mijou Beller, the owner of the boutique that sells jewelry made from shells, beads, and wood, was first contacted by Dolce & Gabbana six years ago. However, Dolce & Gabbana did not have a registered trademark for jewelry at that time. Yet the luxury brand would not stand defeat, or mockery. Instead, D&G filed suit for the boutique to change its name, which has since been changed to “… & Banana.”
Fret no more?
It goes without saying that the perfect pair of jeans is worth more than the price tag. Finding that pair that fits great, is the perfect color, and is good quality is a combination that one might actually say is priceless. True Religion has gone to great lengths to protect what it deems is the perfect combination and recently won an $863.9 million cybersquatting suit.
According to WWD, a jury in Memphis, Tennessee awarded Coach Inc. a little over $5 million on Tuesday March 21, 2012. The jury awarded this sum after it found that Frederick Goodfellow, an owner of a flea market, was guilty of infringing upon the brand’s trademarks. Based upon the lawsuit filed back in 2010 in the Western District of Tennessee, Goodfellow rented space to vendors who were selling counterfeit Coach products. Coach responded by suing Goodfellow along with the offending vendors for $2 million per counterfeit mark, the maximum in statutory damages. The jury subsequently found that the defendants infringed upon 21 of Coach’s trademarks and therefore awarded Coach $240,000 per mark infringed. According to WWD, this amounted to $5.04 million.
According to WWD, a Chinese court has ruled that a China-based clothing maker is legally allowed to use the words “Chivas Regal” on its manufactured apparel. This recent trademark battle follows the lost appeal made by Hermès to the China Trademark Appeal Board a few weeks ago. According to state media, Hermès failed in its attempt to register the Chinese version of its name, Ai Ma Shi in pinyin, because a Chinese company, the Dafeng Garment Co. of Guangdong, had already done so. Apparently, Chinese speakers refer to Hermès by that name and Hermès argued that therefore they should be allowed to register it, but the trademark board disagreed. These two cases are bringing to light the growing intricacies of branding in the Chinese market.