December Trademark Bulletin

JAY-Z Scores Diversity Commitment from American Arbitration Association

In late November, Jay-Z and his legal team sought a temporary restraining order before Judge Saliann Scarpulla of the New York Supreme Court to stay arbitration of an ongoing trademark dispute because of an alleged lack of diversity in the American Arbitration Association (AAA). 

The issue arose after Iconix Brand Group, the owner of several clothing brands, claimed in a 2017 lawsuit that a deal to license the “Roc Nation” logo to Major League Baseball Properties in connection with a line of special edition baseball caps infringed its rights in the ROC NATION mark, which lconix argued it had acquired as part of its 2007 purchase of Jay-Z’s Rocawear clothing brand. Iconix filed an arbitration proceeding against Jay-Z’s team on October 1; however, Jay-Z’s legal team opposed the arbitration on equal protection grounds, arguing that the list of 200 prospective arbitrators authorized to hear the matter included only three individuals identified as African-American, one of whom was conflicted out of the matter. While Judge Scarpulla granted Jay-Z’s motion for a temporary restraining order, his attorneys subsequently withdrew the motion after the AAA acknowledged the dearth of minority arbitrators and indicated a willingness to undertake remedial measures intended to improve the diversity of arbitrators in both Jay-Z’s case and in future arbitrations.

A status conference in the case is set for March 2019. The case is Shawn C. Carter et al. v. Iconix Brand Group, Inc. et al. found here.

Gucci, Forever 21 Settle Battle Over Stripes

Gucci and “fast fashion” retailer Forever 21 have settled their legal dispute over whether Forever 21’s use of blue-red-blue and green-red-green stripes on clothing and accessories infringes Gucci’s trademarks.

Forever 21 originally filed a declaratory action against Gucci in the U.S. District Court for the Central District of California, seeking both a declaration that its use of colored stripes did not infringe Gucci’s trademark rights and cancellation of a dozen of Gucci's trademark registrations. In its Complaint, Forever 21 argued that stripe designs are much too common to serve as trademarks, do not serve as source-identifiers, and are widely used by brands such as Louis Vuitton, Balenciaga, Tory Burch, J. Crew and Urban Outfitters. Thereafter, Gucci moved to dismiss the case, arguing that Forever 21 had not provided any evidence that other parties are, in fact, using Gucci’s blue-red-blue and green-red-green striped trademarks. 

The parties’ reported settlement comes after Judge Fernando M. Olguin rejected Gucci’s request to dismiss Forever 21’s trademark cancellation claims, finding that the claims are “viable” and should be decided at trial. The California district court has filed an order to show cause regarding the settlement and dismissal, ahead of the still-scheduled pre-trial conference scheduled for Monday, February 4, 2019.

The case is Forever 21, Inc. v. Gucci America, Inc., et al., 2:17-cv-04706 (C.D.Cal), found here. Click here for the related article on The Fashion Law.

Ebony’ Mag Sues Owners of ‘The Root,’ Alleging Trademark Tarnishment

On December 7, 2018, ‘Ebony’ magazine sued online competitor ‘The Root’ asserting, among other things, claims of trademark infringement, trademark dilution and unfair competition. The suit arises out of an article published by The Root on November 28, 2018, which calls out Ebony for failing to pay its writers. The offending article is entitled “Dear Ebony Magazine: FU, Pay Your Writers!” and includes a mock Ebony magazine cover attributed to the article’s author, Lawrence Ross, featuring the well-known red and white Ebony logo.

Ebony’s lawsuit claims that defendants have “engaged in a systematic campaign of misinformation regarding Plaintiff and its agents since at least April 19, 2017,” and that allegations that Ebony and its owners have not paid their writers while “spending the thousands owed to black writers” on an expensive gala are “misrepresentations” that resulted in damage to Ebony’s reputation and business relationships (the lawsuit also seeks damages for The Root’s alleged tortious interference with Ebony’s prospective economic advantage). The complaint similarly criticizes the article’s accompanying artwork, which, in plaintiff’s words, contains “1) the identifiable likeness of Plaintiff’s co-founders . . . , 2) false and misleading ‘headlines,’ 3) the famous EBONY Word Mark, and 4) the famous EBONY Logo Mark,” all used without Ebony’s consent. The lawsuit seeks, inter alia, injunctive relief, exemplary/punitive damages for defendants’ alleged willful willfulness, and a disgorgement of defendants’ profits.

The Root article, found here, attempts to co-opt the #EbonyChallenge, a social media campaign in which consumers were asked to upload the Ebony magazine cover corresponding with their birth month and year. In protest of Ebony’s alleged failures to compensate its writers, Ross asks readers to upload the mock Ebony cover with the hashtags #EbonyChallenge and #EbonyStillOwes.

Ebony’s lawsuit, filed in the Southern District of New York, is captioned Ebony Media Operations, LLC v. Univision Communications, Inc., 1:18-cv-11434. The Complaint can be found here.

Foreign Trademark Applications Sharply Increase In Recent Years

According to data provided by the USPTO Annual Performance and Accountability Report, trademark applications filed by residents of foreign countries grew exponentially since 2014. The USPTO Report shows that applications from Chinese residents increased from 6,323 in 2014 to 57,879 in 2018. This explains, in part, the new rule proposed by the USPTO—and posted in our November 2018 Trademark Bulletin, where the USPTO stated that the rule will “ensure that the USPTO can effectively use available mechanisms to enforce foreign applicant compliance with statutory and regulatory requirements in trademark matters.”

Zippo Registers Signature “Click” Sound Trademark

Zippo announced earlier this month the sound trademark of their famous lighter. The mark was registered for international class number 34, as a mark drawing type number 6, used for sensory marks, and was described as “the sounds of a windproof lighter opening, igniting, and closing”. Zippo had already filed an application in the past, which was abandoned after more than two years of legal gridlock. With this new registration, Zippo’s lighter being flicked open and sparked joins MGM’s lion roar, and The Hunger Games’ Mockingjay Whistle, as some of the few sound marks to be registered with the USPTO.

“Real Housewives” Star Loses TM Battle Over Vineyard Vines’ Whale Logo

In 2015, retailer Vineyard Vines LLC and “The Real Housewives of New Jersey” star Margaret Josephs and her company (collectively, “Josephs”) entered into a confidential settlement agreement after Vineyard Vines accused Josephs of creating and distributing products that infringed on its intellectual property rights, including its iconic whale logo. As part of the settlement, U.S. District Judge Sarah A.L. Merriam for the District of Connecticut entered a permanent injunction barring further infringement and a final judgment requiring Josephs to pay Vineyard Vines $300,000 in installments as damages stemming from the infringement. The order also stated that if Josephs violated the injunction, Vineyard Vines could be entitled to $500,000 in liquidated damages and additional relief. On December 5, Judge Merriam found that Josephs violated the injunction by authorizing a third-party company to “sell off” the remaining infringing merchandise after the injunction was issued. The court ordered Josephs to pay Vineyard Vines $110,000 as an unpaid judgment award and $500,000 in liquidated damages plus a provisional grant of attorneys’ fees.

The order can be found here.

LL Cool J Sues Concert Promoter for TM Infringement of Famous Song “Rock the Bells”

On November 27, hip hop recording artist James Smith (aka “LL Cool J”) sued concert promoter Guerilla Union Inc. claiming that the company used the title of Smith’s 1985 song “Rock the Bells” without authorization. According to the complaint, the company that organized a series of hip hop music festivals called “Rock the Bells” used the phrase in its web domain “”, Twitter account “@rockthebells”, and “Rock the Bells” Facebook and Myspace accounts even after Smith successfully cancelled Guerilla Union’s registration for the mark in five classes before the Trademark Trial and Appeal board in October 2017. Smith is asking the court to require Guerilla Union to give him control of the websites and to surrender any merchandise branded with “Rock the Bells.” The case is pending in the U.S. District Court for the Central District of California.

The complaint can be found here.

The Weeknd Sued For Use Of ‘Starboy’ In Marvel Collaboration

On November 14, 2018, Eymun Talasazan filed a lawsuit against Musician Abel Tesfaye AKA The Weeknd for federal trademark infringement, accusing the singer of stealing Talasazan’s “Starboy” comic book character. The Weekend, who has been known to use the “Starboy” moniker as an alterego, had released a studio album and song in 2016 baring the same name. In his complaint, Talasazan alleges that Talasazan had created a comic book universe (“Comic Book Universe”) in 2014 and that in 2016 he began collaborating with Stan Lee, the creator of Marvel, on developing the story arc and characters in that Comic Book Universe. Prior to that, however, Talasazan had allegedly contacted The Weeknd to create a collaboration using the singer’s stage name, but according to the complaint, The Weeknd never responded. The complaint alleges that The Weeknd began separately collaborating with Marvel on the release of a comic bearing his stage name, without including Talasazan, and that collaboration launched in June of 2018.

Talasazan filed a trademark application on October 18, 2017 for “Starboy” in connection with “Comic books.” Then on March 23, 2017, he filed another application for “Starboy” in connection with “Entertainment services, namely, production and distribution of ongoing television programs in the field of drama.”  The Weeknd and his legal team have filed an opposition to Talasazan’s trademarks, claiming that Talasazan only included comics in his Trademark application after the announcement that the Weeknd and Marvel would be releasing the Starboy Comic. Talasazan’s legal team tells TMZ that this case will determine whether a songwriter automatically gains trademark protection for all later uses of a word, without formally filing a trademark application. He is not only suing The Weeknd for Trademark infringement, but wants all copies of the Starboy Comic recalled, impounded and destroyed.

The case filed in Central District of California is Eymun Talasazan vs. XO Trademarks, LLC, et al. (Case No: 2:18-cv-09611). The complaint can be found here.

Alice + Olivia Sues Betsey Johnson, Steve Madden Over Bags With “StaceFace” Design

On December 7, 2018, fashion brand Alice + Olivia (“A + O”) filed a lawsuit against Betsey Johnson and its parent company, Steve Madden, for using an image depicting Stacey Bendet, A + O’s founder and creative director (known as the “StaceFace” design), to sell a line of Betsey Johnson handbags.

According to A+O’s complaint filed in Southern District of New York, A+O sent a cease and desist letter earlier in the year, which resulted in the parties coming to a resolution in March where Betsy Johnson and Steve Madden agreed to stop manufacturing and selling the handbags in question. Then in September, A+O claims that they “identified new goods from the defendants that mimicked the StaceFace design,” noting that the only difference in the new products were the shape of the glasses on the StaceFace design, which were now hearts instead of circles.

The lawsuit claims that Bendet’s name and likeness are “well known” and “inexorably associated with the A + O brand” and includes causes of action for copyright, trademark and trade dress infringement, trademark dilution and unfair competition.

The case is Alice + Olivia, LLC v. BJ Acquisition, LLC and Steven Madden, LLC, 1:18-cv-11482 (SDNY). Click here to be redirected to the related article on The Fashion Law Blog. Click here for the complaint.