NEW YORK — Fifth & Pacific Cos. Inc. and its Kate Spade New York brand have won a legal dispute related to the Kate Spade Saturday brand name and logo against Saturdays Surf NYC.
This story first appeared in the June 19, 2013 issue of WWD. Subscribe Today.
The U.S. District Court for the Southern District of New York issued a decision Monday in Kate Spade’s favor.
In her ruling, Judge Miriam Goldman Cedarbaum wrote, “I conclude that Saturdays Surf NYC has not shown a likelihood of confusion by a preponderance of the credible evidence. I am particularly persuaded by the relative weakness of the word that the two marks share, the significant distance between the men’s and women’s products, and the consistent inclusion of the famous house mark, Kate Spade, in its Kate Spade Saturday mark.”
According to a Fifth & Pacific spokeswoman, “The court’s findings align exactly with what we believe — that both companies and brands can peacefully coexist in the market. We look forward to continued success and innovative design, product and marketing with our Kate Spade Saturday brand.” Company officials declined further comment.
Morgan Collett, cofounder of Saturdays Surf NYC, said, “We are disappointed in the outcome. Our attorneys are currently in the process of evaluating the court’s decision and an appeal. Saturdays obviously disagrees with the court’s ruling and believes that confusion already exists in the marketplace with all of the similarities between both brands, and will only become more of a problem as Kate Spade Saturday increases its advertising presence around the globe. While Saturdays is considering its legal options, it plans to continue to devote its efforts to designing and selling fashion-forward clothing and to expand the Saturdays brand. Saturdays will continue to vigorously protect its signature brand and become an even more significant presence in the fashion world and beyond.”
Last December, Kate Spade New York filed a complaint seeking a declaration that its new global women’s lifestyle brand, Kate Spade Saturday, didn’t infringe on the trademark of Saturdays Surf NYC, a men’s wear company that sells casualwear, surfboards, wet suits and accessories. The dispute began when Saturdays Surf LLC’s attorneys demanded that Kate Spade New York drop its plans to launch Kate Spade Saturday, a line of apparel, handbags, accessories and home goods for young women. Saturdays Surf NYC filed a counterclaim for trademark infringement.