By  on October 8, 2007

NEW YORK — Is Joseph Abboud a man or a trademark?

The answer to that question will greatly affect the outcome of the pending legal battle between Joseph Abboud and JA Apparel, the company that owns the Joseph Abboud trademark.

On Sept. 4, JA Apparel filed a suit against Abboud that charged that the designer’s intention to use his name to promote his new men’s wear line, Jaz, is an infringement of the Abboud trademark. Two weeks ago Abboud retaliated with a countersuit that argued that the designer had a right to associate his name with the new label.

At issue is not the ownership of the brand. The contract is clear: Abboud sold his name and trademark for $65.5 million in 2000. After infighting with JA Apparel CEO Marty Staff, Abboud left the company in 2005. In August, Abboud unveiled his plans for a men’s wear line and with it his intention to publicize the line using his name. Now the judge will have to decide—if and when the case goes to trial in December—where JA Apparel’s trademark rights end and Abboud’s publicity rights begin.

Trademark lawyers say this area of the law is murky. Although there have been thousands of trademark cases, few involve situations in which a person sold his full name, then reentered the market with intention to use that name.

“There is surprisingly little litigation,” said David Belt, a well-known commercial and antitrust lawyer. “The legal standard for fair use and trademark misappropriation is unclear.”

He should know. Belt served on the landmark case Madrigal Audio Labs v. Cello Ltd. in 1986. In it, Mark Levinson, an audio equipment designer, sold his name to Madrigal Audio, then launched a new line of audio equipment called Cello. In press about Cello, Levinson identified himself as the designer of the line, and Madrigal in turned sued, arguing that Levinson had misappropriated the trademark it now owned.

The court ruled that while Levinson was not prohibited from using his name in association with the products, it enjoined him from using “Cello by Mark Levinson” on brochures or product labels. “The question is always, what is the defendant’s right to use his name in conjunction with a competing product,” explained Belt, who represented Levinson in the case.

Although the cases are not identical, there are parallels between the Madrigal Audio case and Abboud’s. The designer’s lawyers have argued that the public has a right to know that Jaz is designed by Joseph Abboud, and that Joseph Abboud, in turn, has a right to identify himself as a maker or designer of products. Abboud has also told the press that he might use “A new composition by Joseph Abboud” as a tagline for Jaz.

“Just like an author writing a book or a director making a film, the public has the right to know who is creating something,” Abboud said in a recent interview with DNR. “I’m not using Joseph Abboud as a trademark; I’m using it as my name. By no means do I want to create any confusion in the marketplace between Jaz and JA Apparel’s product.”

Of course, this is not the first time a fashion designer has sold or fought for his name. The industry is ruled by designers, and driven by branded personalities. When these brands go up for sale, often their founder’s names go with them. Think Helmut Lang, Calvin Klein or Jil Sander.

One precedent that is sure to come up in the Abboud trial is the Paolo Gucci case. After years of serving as the main designer of the famed leather goods house, Paolo started his own fashion and accessories business in the early ’80s. A protracted legal battle followed in which the Gucci companies opposed Paolo Gucci’s use of his name as a trademark, arguing that it caused confusion among consumers and infringed on their own registered marks. A judgment in 1988 ruled that Paolo Gucci could not use his name as a trademark, but allowed its use to designate him as its designer. He was then free to use the phrase “designed by Paolo Gucci” for the line.
But a similar case from a decade ago generated a different outcome. In 1997 a court prevented clothing designer Albert Nipon from using the tagline “designed by Albert Nipon” in conjunction with a new line called American Pop, arguing that Nipon had previously sold his name to Leslie Fay.

The distinction, trademark lawyers say, is that in the Nipon case the name was sold; in the Gucci case it was not. “Typically, the court has a different standard if money has exchanged hands,” said David Kelly, a leading trademark lawyer.

In addition, the court will have to decide how far Joseph Abboud’s publicity rights extend. “What is the dimension of the right for someone to use his name?” asked David Belt. “Is it just an issue of interpreting his contract [with JA Apparel], or are those rights inalienable?”

JA Apparel’s lawyers, Kaye Scholer LLP, are bound to argue that Abboud signed some of his publicity rights away. Their complaint notes that when Abboud sold his trademark in 2000, he gave up his rights to use the words “Joseph Abboud,” “designed by Joseph Abboud,” “by Joseph Abboud,” or “anything similar thereto or derivative thereof.”

JA Apparel declined to comment for this story.

The court will also be tasked with deciding whether Abboud’s use of his name in publicizing Jaz will create confusion in the marketplace. JA Apparel’s lawyers claim confusion already exists. A memo filed to the U.S. District Court in the Southern District of New York last month notes that a representative from a men’s magazine e-mailed JA Apparel stating, “I hear that Joseph Abboud is launching a new men’s line Jaz.” The memo also cites another e-mail from an investment banker congratulating JA Apparel on its new clothing line “Jaz.”

While the outcome of the lawsuit will greatly affect how Jaz is marketed, Abboud said the schedule for Jaz’s fall 2008 launch has not changed and that he’s confident in the line’s success, no matter what the court decides. “Brands are only as good as the creativity behind it,” he said. “Any label has to stand on its own.”

Aside from the issue of trademark infringement, Abboud has filed a separate suit against JA Apparel that seeks $93 million in royalties for unauthorized use of Abboud’s reputation and publicity rights. Specifically, the complaint—filed by Abboud’s attorneys, Arnold & Porter LLP—claims that since Abboud left the company in 2005 the latter has created a number of advertising campaigns that create the impression that Abboud still works for JA Apparel. The complaint cites as examples a slogan for an ad that read, “Do U Know Joe?” and the Web site

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