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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.

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

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