NEW YORK — Kate Spade New York filed a complaint Wednesday in the U.S. District Court for the Southern District of New York seeking a declaration that its new global women’s lifestyle brand, Kate Spade Saturday, doesn’t infringe on the trademark of Saturdays Surf NYC, a men’s wear company that sells casualwear, surfboards, wet suits and accessories.
The dispute started last month when Saturdays Surf LLC’s attorneys demanded that Kate Spade New York drop its plans to launch Kate Spade Saturday, an apparel, handbags, accessories and home line for young women. The clash escalated when Saturdays Surf NYC and its fans began posting disparaging comments accusing Kate Spade Saturday of trademark infringement on Saturdays Surf NYC’s Facebook page and on the Kate Spade Saturday Instagram and Twitter pages.
“In an effort to resolve this dispute amicably, we reached out to Saturdays Surf NYC’s lawyers when we heard of their concerns,” said Craig Leavitt, chief executive officer of Kate Spade. “We explained our complete good faith in the selection of the name, described the Kate Spade Saturday concept to them and why consumers will not be confused and offered to answer any additional questions they may have. We are disappointed that, instead of responding to us directly, Saturdays Surf NYC has chosen to escalate this dispute via social media and other avenues, and we were left with no other option but our current action to set the record straight.”
Colin Tunstall, a partner in Saturdays Surf NYC, said he hadn’t seen the complaint yet, but his trademark attorney has been in talks with their legal team. He said that Saturdays Surf NYC, which operates three stores and a global wholesale business in 13 countries, has been in business three and a half years, “and we’ve slowly built this brand from scratch. It was brought to our attention that there was another brand called Saturday with similar branding and similar aesthetic and reach. We’ve opened a store in Japan and we’re working in the Japanese market. Their first flagship store will be in Japan and there’s lots of overlap,” said Tunstall. He said friends were contacting them to see if they were doing a collaboration with Kate Spade or were they purchased by Kate Spade.
According to Kate Spade, the Kate Spade Saturday name was conceived in 2009, “with no knowledge whatsoever of the Saturday’s Surf NYC name.” In 2010, Kate Spade New York applied to register the trademark; its application was approved by the U.S. Patent and Trademark Office later that year. At the time, Saturdays Surf NYC had no trademark registrations. It didn’t apply for its trademark until 2011. Tunstall confirmed that Saturdays Surf NYC didn’t have trademark registration then. “We were slowly figuring things out. It was very grassroots and it was an oversight on our part,” said Tunstall, noting his company was the first to use the name. He said they are looking to expand into more categories in the future “and this confusion could possibly be a problem for us.”
Kate Spade Saturday plans to open a store in Tokyo in March, followed by e-commerce sites in Japan, the U.S. and Brazil.
Kate Spade is represented by David H. Bernstein and Jennifer Insley-Pruitt of Debevoise & Plimpton LLP. Saturdays Surf NYC is represented by David Christopher Baker of Hart, King & Coldren.