By  on August 18, 2005

NEW YORK — Phillips-Van Heusen Corp. and Calvin Klein filed a trademark-infringement suit against Calvin Clothing Company on July 29 in Manhattan federal court over use of the name "Calvin" on apparel.

The lawsuit is the most recent dispute between the two companies. Calvin Clothing filed its own trademark-infringement suit against Calvin Klein and its parent company in federal court in Pennsylvania last December.

The New York lawsuit filed by PVH and Calvin Klein asked for a declaratory judgment and petitioned to cancel an existing, incontestable 1976 Calvin Clothing trademark for men's suits and sports coats. The lawsuit also asked the court to dismiss with prejudice six pending applications filed by the company to extend the brand into other kinds of apparel. PVH alleged five counts in the New York lawsuit including trademark infringement, false designation of origin, trademark dilution and unfair competition. The company is seeking preliminary and permanent injunctions against Calvin Clothing.

A spokesman for PVH said it is company policy not to comment on pending litigation.

In its earlier suit filed in Pennsylvania, Calvin Clothing sought a declaratory judgment to say it is the senior user of "Calvin" on apparel, particularly men's and children's clothes. The company currently holds an incontestable trademark for children's clothes that is not challenged in either lawsuit. The Pennsylvania lawsuit alleged trademark infringement, false designation of origin and unfair competition and asked for a permanent injunction against PVH and Calving Klein. Additionally, the documents ask for a public explanation from PVH about the difference between the two brands as well as monetary damages.

According to background information in the complaint, the two companies had reached a mutual understanding that when Calvin Klein initially started doing business Calvin Clothing could use "Calvin" as a trademark while Klein would use the "Calvin Klein" trademark. The case is pending.

"I think it's fair to characterize the New York and Pennsylvania litigations as mirror images of each other," said Anthony LoCicero, a lawyer from Amster, Rothstein & Ebenstein who is representing Calvin Clothing.

While cases of this kind aren't uncommon, said David Jacoby, litigation partner with New York-based Phillips Nizer, which is not involved in either lawsuit, the lawsuits point out how important it is for companies to stay vigilant when it comes to protecting trademarks."You have to think in terms of both space and time looking forward to see how much room you may need for your mark, and therefore how much protection you need to insure in whatever agreements you work out," Jacoby explained.

Since both suits raise the same issues, one will likely be moved so that both can be addressed at one proceeding, Jacoby said.

Typically, the first place where a case is filed is where it ends up being adjudicated.

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