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Court Reverses Ruling Against Abboud

Joseph Abboud can use his name again in association with his men’s wear line Jaz, at least for now.

Joseph Abboud can use his name again in association with his men’s wear line Jaz, at least for now.

This story first appeared in the June 12, 2009 issue of WWD.  Subscribe Today.

In a development that revives a two-year-old legal conflict, the U.S. Second Circuit Court of Appeals lifted an injunction that barred the designer from using his name in association with Jaz and kicked the case back to district court.

The injunction was a result of a hotly contested legal battle that raged last winter between Abboud and his onetime business partner JA Apparel, the company that purchased the designer’s trademarks and eponymous brand.

In a statement, Abboud said he felt vindicated by the Circuit Court’s reversal and confident given the guidance provided by the court’s detailed opinion on the sale of his trademarks.

“It’s always been about the product for me,” he explained to WWD. “But this paves the way to let me be recognized for my work.”

The three-judge panel rejected the lower court’s ruling that Abboud, in selling his trademarks, signed away all his rights to use his name for commercial purposes. The court’s decision found “no provision in the sale agreement conveying all of Abboud’s rights to use his name,” and went on to criticize the broad scope of the injunction.

JA Apparel, which purchased the trademarks from GFT in 2004, did not concede defeat, however. The company said: “JA Apparel will continue to vigorously defend its ownership of the Joseph Abboud trademark, and we remain confident that further proceedings in the case will result once again in a ruling that JA Apparel owns the Joseph Abboud name for all commercial purposes.”

While positive news for the designer, the Court of Appeals refrained from specifying how and when Abboud could use his name. That will be up to the U.S. District Court for the Southern District of New York, which will once again take up the question of where JA Apparel’s trademark rights end and Abboud’s publicity rights begin.

This is likely unwelcome news for Judge Theodore Katz, who presided over the original trial and seemed reluctant during its proceedings to parse out the details of how Abboud might legally use his name. He urged both parties to settle numerous times during the hearing and failed. At the request of the Court of Appeals, he will now have to tackle that thorny problem head-on.

The conflict has its roots in September 2007, when JA Apparel sued the designer for trademark infringement after reports surfaced Abboud planned to use his name in the tag line for his then-new men’s wear line.

JA Apparel contended in its complaint that Abboud’s $65.5 million sale of his trademarks precluded the designer from using his moniker in any commercial context.

Abboud argued that — despite selling his trademark — he maintained a legal right to use his name for publicity. “Joseph Abboud is the name on my driver’s license,” he said at the time. “Should I become ‘The Artist Formerly Known as Joseph Abboud?’”

The trial that ensued over the winter of 2008 saw a renewed battle between JA Apparel’s Marty Staff and Abboud, whose relationship had long been acrimonious. Accusations and counterclaims proliferated. But in the end, Abboud was dealt a defeat: The judge found that he had no right to use his name commercially — a ruling Abboud immediately appealed.

And the saga continues. Abboud’s counsel said the district would not likely rule on the matter again until summer’s end.

In the meantime, Abboud said he wouldn’t rush into any advertising or marketing materials that used his name. “It’s business as usual here,” he said. “I plan to act in accordance with the ruling.”