NEW YORK — A long-simmering battle over the origin of the Roxy name might finally get its day in court.
Just when Quiksilver Inc. began using its Roxy trademarks is the issue before a federal district court in Los Angeles. The answer will give an edge to one participant in two ongoing disputes between the lifestyle brand and Kymsta Corp., whose own label is Roxywear, regarding alleged infringement and the Roxy trademark.
Legal documents filed by Kymsta assert that Quiksilver changed the start date of its use of the Roxy trademarks. Those documents noted that the firm in past promotional materials and in its 1995 annual report stated that the Roxy line was introduced in 1993. The date of first use, according to court papers, was listed as Jan. 1, 1992 in Quiksilver’s trademark registration for the Roxy mark.
Michael Yoder, Quiksilver’s counsel at O’Melveny & Myers, said Friday the judge may or may not resolve the issue on Monday. “Even if he does, it is only one step in the process,” he said. “There are other issues that have to be resolved. One issue as an example is whether the parties, under the doctrine of laches, have waited too long to file their claims and therefore it would be unfair to either prevent one from using the marks or [allow one to] recover damages.”
The attorney said his client has published reports showing that the Roxy line was introduced in September 1990.
Either way, unless there is a settlement resulting in a coexistence of the two marks or a judicial ruling establishing laches, the financial stakes could be substantial for the winning firm.
Kymsta is not a public company. However, Quiksilver’s annual report in a regulatory filing for the year ended Oct. 31, 2002, said its Roxy line — which includes the Roxy, Roxy Girl and Roxy Teenie Wahine labels — accounts for 31 percent of revenues. With total revenues for the 12 months ended Oct. 31 at $705.5 million, the Roxy line contributed $218.7 million to Quiksilver’s top line.
The legal maneuvering began in May 2002 when Quiksilver filed a trademark infringement and unfair competition lawsuit against Kymsta and its owners, Arthur Pereira and Roxanne Heptner. According to that lawsuit, Kymsta’s sale of the Roxywear name with some of the same retail customers who buy Quiksilver resulted in “actual confusion” between the two product lines. Quiksilver said in its lawsuit that the actions involving “unauthorized use of the Roxywear mark is intended to trade upon the goodwill and substantial recognition associated with [Quiksilver’s] Roxy marks.”Quiksilver is seeking a declaration that its Roxy marks are valid, an injunction barring further use of the Roxywear mark, unspecified damages and an accounting of profits.
Kymsta, for its part, filed counterclaims in July 2002 that paint a different picture. It said it adopted the Roxywear mark in December 1991 because it included the nickname of Heptner, who designed the apparel line. Kymsta said by January 1992, the mark was used in promotional materials and samples as it began marketing the line. Kymsta holds a registration for the Roxywear mark. It also said that Quiksilver should be barred from raising any claims over the mark since it waited more than 10 years before raising the issue.
Turning the tables, Kymsta alleged that Quiksilver’s use of the Roxy mark is “unauthorized” and was “intended to trade upon the goodwill and substantial recognition associated with Kymsta’s Roxywear mark.”
Kymsta, charging that Quiksilver’s uses “constitute fraud, oppression and malice,” is seeking exemplary damages, as well as cancellation of Quiksilver’s registrations for the Roxy mark and an accounting of profits.
Alberta Ferretti's "Rainbow Week" sweaters are back. The designer closed her #MFW show with a few day-of-the-week sweaters, which first debuted on the catwalk last January as part of the pre-fall 2017 collection. #wwdfashion (📷: @delphineachard)