NEW YORK — The legal fireworks have started up again between designer Joseph Abboud and his namesake company, JA Apparel Corp.
JA Apparel filed a civil suit last week against Abboud on issues related to the latter’s new Jaz men’s wear label, the launch of which was first detailed in DNR on Aug. 6. Specifically, JA Apparel charged that Abboud’s stated intention to use his own name to help publicize Jaz would violate JA Apparel’s ownership of the Joseph Abboud trademarks. The company is seeking a permanent injunction forbidding Abboud from using the Joseph Abboud name on any marketing, advertising or promotional materials related to the Jaz brand, as well as unspecified monetary damages.
Secondly, JA Apparel charged that Abboud violated terms of his two-year non-compete agreement by working on the Jaz launch prior to the agreement’s July 13 expiration. As evidence, JA Apparel contends it would have been impossible for Abboud to line up his three Jaz licensees (Jack Victor, Cardinal of Canada, and J.S. Blank & Co.) and his two related acquisitions (Alden Street Shirts and Merrill Sharpe), as well as create the first Jaz samples, in the 2 1/2-week span of time between the end of his non-compete agreement and his unveiling of those efforts to DNR.
JA Apparel, which is owned by J.W. Childs Associates and helmed by CEO Marty Staff, declined to further discuss the suit, but noted in a prepared statement: “This lawsuit demonstrates our unwavering commitment to protecting the Joseph Abboud trademark in order to prevent any confusion in the marketplace. JA Apparel Corp. owns all legal rights to the valuable Joseph Abboud brand name and we have consistently said that we will require Mr. Abboud to comply with all the terms and conditions of the agreements he signed and for which he received abundant consideration of $65.5 million.”
The lawsuit is not a complete surprise, given that JA Apparel has run advertisements in this magazine with the amusing but pointed message: “The finest trademark lawyers in the world wear Joseph Abboud.”
Abboud, for his part, has insisted from the inception of Jaz that he retain his own personal publicity rights and is legally permitted to let consumers know that he is the creative force behind the new label.
“Joseph Abboud is the name on my driver’s license. Should I become ‘The Artist Formerly Known as Abboud’?” he said. “Just like an author writing a book or a director making a film, the public has the right to know who is creating something. I’m not using Joseph Abboud as a trademark; I’m using it as my name. I clearly never sold my personal publicity rights. By no means do I want to create any confusion in the marketplace between Jaz and JA Apparel’s product. But we will certainly defend our rights. I’ve fought these battles before.”
As for the non-compete agreement, Abboud noted that none of the licenses have been officially signed yet—although they should be in the coming weeks. He also pointed out that Jaz will not launch at retail until fall ’08, more than a year after the end of his non-compete obligations. “There is no product on the market and I haven’t shown a stitch of clothing to a retailer yet,” he said.
Abboud’s history with the company he founded in 1988 is a contentious one. After originally selling his trademarks in 2000 to then-partner GFT Net for the aforementioned $65.5 million, Abboud clashed with the new owners and management of JA Apparel, ending up in a bitter legal battle with them. Those suits were dropped when GFT sold JA Apparel to J.W. Childs Associates in 2004, in a deal engineered by Staff that saw Abboud return to the company as chief creative director.
However, Abboud left the company once again in 2005, following conflicts with Staff—after which his non-compete agreement kicked in. Last month Abboud invited DNR to his new Bedford, N.Y., headquarters for a first look at his new Jaz collection and to meet his business partners.
In JA Apparel’s new complaint filed in U.S. District Court in the Southern District of New York, the company’s lawyers at Kaye Scholer LLP accuse Abboud and his companies, Houndstooth Corp. and Herringbone Creative Services Inc., with trademark infringement, trademark dilution, false and deceptive practices, and breach of contract, among several other charges.
The complaint notes that when Abboud sold his trademarks in 2000, he sold all rights to use the words “Joseph Abboud,” “designed by Joseph Abboud,” “by Joseph Abboud,” “JA,” or “anything similar or derivative thereof, either alone or in combination with other words or symbols.”
Abboud has said he may use the term “A new composition from designer Joseph Abboud” as a potential tagline to promote the launch of Jaz.
The complaint argues: “Defendants’ infringement of the Abboud marks is likely to cause a not insubstantial number of consumers and others to be confused or mistaken into believing that defendants and their new menswear collection are affiliated with, originate with, are sponsored or approved by, emanate from, or are otherwise associated with JA Apparel and its Joseph Abboud line of products.”
Despite the acrimonious legal tone of the court filing, both JA Apparel and Abboud appear eager to iron out their differences as quickly and with as little rancor as possible. Whether that happens will become more apparent once Abboud’s attorneys file their answer and any potential counterclaims in the next few weeks.