NEW YORK — Coach Inc. and Coach Services Inc. filed a lawsuit against Kohl’s Corp. in federal court here on March 20 for alleged trademark infringement and breach of contract for violating earlier settlement agreements between the two parties.
According to court documents, Kohl’s allegedly infringed on trademarks Coach holds on Sonoma handbags, as well as Coach hangtags. The company also alleged that Kohl’s infringed on trade dress of its Soho, Hamptons Weekend, Wave Design, Suede Duffle, Coyote Soft Duffle and Demi Zip collections. Coach also alleged that the department store used its trademarks on a broad range of handbags and accessories sold in Kohl’s stores and online.
Kohl’s declined to comment on the lawsuit, saying it had not yet been served. The retailer added that in accordance with company policy, it does not comment on pending litigation.
The counts of the lawsuit filed on March 20 include federal and common-law trademark infringement, federal and common-law trade dress infringement and breach of contract in relation to settlements reached in 1998 and 1999 for similar allegations.
The two settlements referred to in the current court documents were reached with Coach’s prior owner, Sara Lee Corp., and concern Kohl’s alleged previous infringement of the Sonoma trademark and alleged sale of “look-alike” Coach handbags. Lawsuits were never filed in the two matters, but legal correspondence led to settlement agreements, said Coach spokeswoman Andrea Shaw Resnick.
According to the recent court documents, Kohl’s and Coach signed two separate settlement agreements. The 1998 agreement said Kohl’s agreed to “limit use of any marks which incorporate the word Sonoma” on handbags and accessories, but the company could continue to use a trademark for Genuine Sonoma Jean Company; the 1999 agreement said Kohl’s agreed to “stop production and sale of the look-alike Coach styles,” according to the lawsuit filed last week.
Coach alleged that Kohl’s violations of the previous settlement agreements were “deliberate and intentional” and that the company has sustained damages as a result, according to court documents.
“We’re both very well regarded companies in the marketplace, and we’re very disappointed that it’s come to this,” Resnick said.
Coach asked the court to permanently restrain Kohl’s from violating the trademarks in question or the trade dress and configuration of its products. Coach also asked for an accounting of profits from Kohl’s, treble damages for the alleged current violations, damages for the alleged settlement agreement breaches and attorneys fees.
This story first appeared in the March 24, 2006 issue of WWD. Subscribe Today.