New York & Company Inc. is facing a $5.6 million bill for launching a line of activewear branded Velocity because the term was already trademarked and being used by activewear company Reflex Performance Resources Inc.
A New York jury on Friday handed down the verdict against New York & Co. after finding the women’s apparel and accessories retailer had willfully infringed on Reflex’s Velocity brand with a new line of activewear, allegedly branded with “an exact copy” of Reflex’s long-licensed mark.
U.S. District Judge Jed S. Rakoff agreed with the jury’s assessment and prior to issuing a full opinion on the case, which is expected next month, barred New York & Co. from any further use of the Velocity mark on any products, be it “alone or in conjunction with other words.”
Counsel for Reflex, Darren Oved of Oved & Oved said Monday that he’s “pleased that in rendering its verdict, the jury recognized the distinctiveness of our client’s trademark by holding [New York & Co.] accountable.”
A representative of New York & Co. could not immediately be reached for comment.
Reflex, which sells its line of 90 Degree by Reflex activewear through a variety of national sporting and discount retailers, filed the suit in April seeking unspecified damages.
The New York-based Reflex said it has licensed the Velocity mark extensively for a full range of women’s activewear through 4 Pillar Dynasty LLC, a co-plaintiff and the owner of the mark since 2012. In early 2016 however, Reflex discovered that New York & Co. had launched a competing activewear line called NY&C Velocity.
Given the alleged design similarity of the mark being used, and that it was being used on the same type of goods, Reflex said in its complaint that the two branded offerings “have and are likely to continue to cause confusion” among consumers.
Moreover, Reflex claimed New York & Co. used the Velocity mark “with the intent to mislead or deceive the public” as to the origin of the activewear products.
While Reflex won its request for damages and for an order banning New York & Co. from further use of the mark, the retailer still has the opportunity to appeal the verdict, which could lead to a reconsideration of the $5.6 million total.
In a standard response to the allegations New York & Co. filed in May, the company denied “each and every alleged cause of action,” along with the related damages sought against it.
Reflex also in April filed a similar lawsuit over the alleged use of the Velocity mark by Saucony Inc. However, Saucony is currently seeking a dismissal of the suit entirely, claiming it has a “senior” and “continuous” user rights over the mark.