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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.

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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