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Kate Spade’s Bright Colors Pay off In Spades

Kate Spade LLC (“Kate Spade”) recently weathered an attempt by Saturdays Surf LLC’s (“Saturdays Surf”) to enjoin Kate Spade’s use of the trademark “Kate Spade Saturday” in connection with clothing.  Kate Spade filed a declaratory judgment action against Saturdays Surf seeking a judgment that Kate Spade’s “Kate Spade Saturday” trademark did not infringe Saturdays Surf’s “Saturdays Surf NYC” trademark.

The court found in favor of Kate Spade for several reasons.  First, each party’s clothing was marketed to a different demographic, men v. women, and 40% of Kate Spade’s “Kate Spade Saturday” line consisted of dresses.  The majority of Saturdays Surf’s clothing were designed for men.  The court analyzed the clothing items and concluded that the bright palates used by Kate Spade would unlikely be confused with the neutral shades used by Saturdays Surf.

While the court recognized similarities in the marks, namely, the term “Saturday”, the court ultimately felt that the dissimilarities, such as the use of the famous house mark KATE SPADE, outweighed the similarities of the two marks.  The court rejected Saturdays Surf’s claim of reverse confusion because the KATE SPADE brand is associated with women’s fashion and accessories, not men’s.

Even though the court determined the “Saturday” term used in both marks was suggestive, the crowded field of users diminished Saturdays Surfs’ ability to assert exclusive right in the term. Also, the court found that consumers of each party’s fashionable, high quality/high priced clothing were sophisticated consumers, not making impulse purchases.

The court ultimately denied Saturdays Surf’s injunction finding Saturday Surf failed to show a likelihood of confusion because of the difference in apparel offered by both parties and the relative weakness of the term “Saturday” as used in the party’s marks.

Cleaning Up Counterfeits by Cutting The Cash Flow From Ads

It looks like IP rights holder’s may now have more recourse against the pirates and counterfeiters than a DMCA notice or the lengthy UDRP Complaint process.  This week, just a month after the White House released its 2013 Joint Strategic Plan on Intellectual Property Enforcement, and with the support of the U.S. Interactive Advertising Bureau, eight U.S. companies that operate Internet advertising networks (Google, Microsoft, Yahoo!, Condé Nast, 24/7 Media, Adtegrity, and SpotXchange) announced committed to a set of “Best Practices Guidelines for Ad Networks to Address Piracy and Counterfeiting” which is intended to cut off the cash flow  from online ad sales to websites engaging in copyright and trademark infringement.

The general commitment made by the Ad Networks is to:

(a)  Maintain policies prohibiting websites that are principally dedicated to selling counterfeit goods or engaging in copyright piracy and have no substantial non-infringing uses from participating in the Ad Network’s advertising programs and post such policies on the Ad Network’s website;

(b)  Maintain and post these best practices guidelines on the Ad Network’s website;

(c)  Ad Network policies will include language indicating that websites should not engage in violations of law;

(d)  Participate in an ongoing dialogue with content creators, rights holders, consumer organizations, and free speech advocates.

The commitment includes the institution of a complaint process similar to the DMCA’s “notice-and-takedown” system, whereby Ad Networks will (among other things): “Accept and process valid, reasonable, and sufficiently detailed notices from rights holders or their designated agents regarding websites participating in the Ad Network alleged to be principally dedicated to selling counterfeit goods or engaging in copyright piracy and to have no substantial non-infringing uses.”  In response to such a complaint, “[a]n Ad Network may take steps including but not limited to requesting that the website no longer sell counterfeit goods or engage in copyright piracy, ceasing to place advertisements on that website (or pages within that website) until it is verified that the website (or pages within the website) is no longer selling counterfeit goods or engaging in copyright piracy, or removing the website from the Ad Network.”

Prior to this effort, while copyright owners could clean up infringing content on the Internet through the use of DMCA notices to online service providers (OSPs), and trademark owners could file UDRP complaints to have infringing domains (i.e. domain names that are the same or confusingly similar to its trademark(s)) transferred to the trademark owner, there was little recourse against websites selling counterfeit products.  It will be interesting to see if these Ad Network Best Practices have any influence on the practices of the OSPs.  Is there a Digital Trademark Act in our future?!

See Also: Google Public Policy Blog  Post

JESUS JEANS v. JESUS SURFED: THIS TIME, IT’S BIBLICAL!

It appears Jesus Jeans SRL, the controversial Italian fashion company, has cast the first stone against Michael Julius Anton, the man behind the ‘Jesus Surfed’ fashion label, in its latest attempt to stop anyone from registering the name ‘Jesus’ as a trademark for clothing. It seems most have ‘turned the other cheek’ and backed down – but not Mr. Anton.

Mr. Anton filed a federal trademark application to register JESUS SURFED in May 2012 for shirts, t-shirts, hats and bandanas (Application No: 85/638044). Jesus Jeans then filed an Opposition to the application with the Trademark Trial and Appeal Board (TTAB) in February 2013 arguing that the JESUS SURFED mark would, if registered, cause confusion with its own registered mark, JESUS (Registration No: 3232057) which covers a variety of clothing items. Jesus Jeans argued its rights in the mark date back to 1999 and asserted that it had successfully opposed similar applications for ‘Jesus Couture’, ‘Jesus Image’, ‘Sweet Jesus’, ‘Jesus Loves Jeans’, ‘Jesus Chic’, ‘Jesus First’, and ‘Jesus Saves’, to name but a few. Continue reading

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uFaker is an easy to use web, mobile and social platform for identifying, reporting and combatting counterfeits.  It provides Trademark Owners with a real-time system for sharing and tracking counterfeit activity among its team of lawyers, investigators, licensees and law enforcement. uFaker also mobilizes the masses (TM Owner customers) to report counterfeits and rewards them with web-based retail discounts as a measure of appreciation and gives TM Owners the option of providing additional discounts/rewards following successful actions stemming from a uFaker report.

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SEEING RED

The Second Circuit’s March 8, 2013 decision has swank shoe designer Christian Louboutin (and likely the rest of us) seeing RED.

Back in September, the Second Circuit “kicked” out the District Court’s ruling that a single color could never serve as a trademark in the fashion industry, holding that Louboutin’s red lacquered outsole has acquired limited “secondary meaning”, but still stopped the litigious Louboutin in his tracks, issuing a Mandate providing:

“Pursuant to 15 U.S.C. § 1119 the Director of the United States Patent and Trade [sic] Office shall make appropriate entry upon that Office’s records to reflect that U.S. Trademark Registration No. 3,361,597, held by Christian Louboutin and dated January 1, 2008, is limited to a red lacquered outsole on footwear that contrasts with the color of the adjoining (“upper”) portion of the shoe.”

See September 5, 2012 Opinion HERE

In accordance with the Second Circuit’s mandate, the USPTO proposed the following amended description of the mark for U.S. Trademark Reg. No. 3,361,597:

“The color(s) red is/are claimed as a feature of the mark. The mark consists of a lacquered red outsole on footwear that contrasts with the color of the adjoining remaining portion of the shoe (known as the ‘upper’). The dotted lined are not part of the mark but are intended only to show placement of the mark.”

Seeking to “heel his soles”, Christian Louboutin asked the USPTO to adopt alternative language, insisting that the Court of Appeals intended to only exclude red monochrome shoes. Mr. Louboutin proposed the following amendment:

“The color(s) red is/are claimed as a feature of the mark. The mark consists of a lacquered red outsole on footwear that contrasts with the color of any visible portions of the shoe. The dotted lined are not part of the mark but are intended only to show placement of the mark.”

The USPTO refused to “step on the court’s toes”, indicating that the USPTO does not have discretion to deviate from the terms of a court’s §1119 mandate.

Thereafter, Louboutin “tap, tap, tapped” his way back into court requesting that the Second Circuit modify its mandate. The court “booted” Louboutin’s request, citing authority which would require the court to recall the mandate only under “exceptional circumstances”. The court concluded that, “Louboutin has made no showing that any of the factors favor recall and modification of the mandate.”

See March 8, 2013 Opinion HERE

Redefines the term 'high heels' [009 of 365], a photo by KaiChanVong on Flickr,  used under a Creative Commons Attribution-ShareAlike license httpcreativecommons.orglicensesby-sa2.0

This doesn’t mean that the red sole is going to become “as common as an old shoe” but it does mean that we may see an influx of red-soled red shoes given that “use of red lacquer on the outsole of a red shoe of the same color is not a use” of Louboutin’s mark. It remains to be seen if Louboutin will take this “in stride” or attempt to broaden its rights to cover a red sole that contrasts with the color of “any visible portions of the shoe”.

Tiffany…Generic?

Recently Tiffany filed a complaint against Costco in the United States District Court for the Southern District of New York for trademark infringement and related claims. According to the complaint, for many years Costco has sold diamond rings, describing them as “Tiffany” rings. However, Tiffany never authorized Costco to sell its goods and Costco never actually sold Tiffany products. This, Tiffany argues, has resulted in “hundreds if not thousands of people who mistakenly believe they purchased and own a Tiffany engagement ring from Costco.” Rather than throwing in the towel, Costco has counterclaimed, arguing that “Tiffany” is generic for a style or type of ring setting.

This could get interesting.

Tiffany & Company and Tiffany (NJ) LLC v. Costco WholesaleCorp, U.S. District Court, Southern District of New York, 13-1041 Continue reading

DESIGNS… FOR REAL?

If you go searching for fake handbags or NFL jerseys on-line you may get an early April Fools Day present. The Department of Homeland Security (“HS”) has designed and launched a website to educate consumers about all the troubles they may face if they buy “fakes”. The HS website is located at DESIGNSFAUXREAL.COM.

If HS seizes a website that sells counterfeit goods, the plan is to replace it with DESIGNSFAUXREAL.COM. There, consumers will learn the harsh realities of buying counterfeit goods. The website looks like someplace you would find the best of the best. However, the deeper you dig the more apparent it becomes that you are being played for a fool. For example, if you click on the “clothing” offer link it leads you to a special offer: “Free destroyed credit rating”. Banner ads across the top of the site’s homepage read, “Free Identity Theft with Every Purchase” and “Clearance on Your Bank Account”. When you attempt to complete your purchase the site indicates: “Really? Is this ring worth having to spend the next year and a half trying to fix the damages caused by identity theft?” The website was designed to scare, amuse and hopefully educate. Well done HS.

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