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Judge Rules on Joseph Abboud Name Use

Ruling in in U.S. District Court in Manhattan says designer can use name only under specific instances.

A federal judge ruled Tuesday that Joseph Abboud can use his name for commercial purposes, but only up to a point.

In an order handed down in U.S. District Court in Manhattan in Abboud’s long-standing legal battle with JA Apparel Corp., Judge Theodore Katz found that Abboud’s future use of his name in advertisements and other marketing materials must qualify as “fair use” and laid out in detail how that might look.

In his 59-page ruling, Katz wrote, “Abboud’s name must be used descriptively, in the context of a complete sentence or descriptive phrase, and must be no larger or more distinct than the surrounding words in that sentence or phrase.”

However, the court directed, he may not use the name on apparel, labels, hangtags or product packaging connected to his Jaz label, the creation of which led to the legal dispute in 2007, or “as a trademark, service mark, trade name or brand name” on other merchandise.

Both JA Apparel, the plaintiff in the case, and Abboud described the decision as a victory.

“I’ve been a craftsman all my life,” Abboud told WWD Wednesday. “This is not about celebrity. I just want to be recognized for my work.”

While acknowledging the trademark was sold in 2000 and is owned by JA, the designer said the decision gives him the opportunity to “inform the public that I am the author of the work.” He went on to call it a “landmark” decision because it “allows an individual designer to separate his or her talent from the trademark.”

JA viewed the decision differently.

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“Mr. Abboud retains extremely limited rights to use his name in advertising and other promotional materials,” the company said. “The restrictions imposed by the court on Mr. Abboud’s use of his name for these purposes are so rigid that we consider these rights to be of very limited value for Mr. Abboud, and we have no concern about it causing confusion in the marketplace.”

Marty Staff, president and chief executive officer of JA Apparel, said, “While Mr. Abboud is free to compete in the consumer marketplace, he simply must do so without in any way using JA Apparel’s valuable Joseph Abboud brand name. We are hopeful that this ruling ends this case and enables us to focus on continuing our successful efforts to build the Joseph Abboud global lifestyle brands in markets around the world.”

In June, the U.S. Second Circuit Court of Appeals lifted an injunction that barred the designer from using his name in association with Jaz and sent the case back to the district court, where it had commenced in September 2007. Two years ago, long after an attempt at a reconciliation between the designer and the company bearing his initials had dissolved, JA alleged infringement of its trademark based on the planned introduction of Abboud’s Jaz label, which would have mentioned Abboud by name. The tag line for Jaz was initially expected to read “A new composition by designer Joseph Abboud.”

Abboud sold his company and trademarks to JA Apparel for $65.5 million in 2000. The Abboud business was subsequently sold by RCS MediaGroup to JA Holding Inc., an entity formed by private equity firm J.W. Childs Associates, in 2004 for $73 million, less debt. Staff was named ceo following completion of the sale.

Abboud and Staff put any differences aside and worked together not long after the acquisition was completed, but the rapprochement was short lived. Abboud left the firm in spring 2005 and commenced plans for his new venture two years later upon the expiration of his non-compete clause in 2007.