Perry Ellis’ trademark holding company PEI Licensing Inc. on Tuesday told an Illinois federal court that new Thom Browne products emblazoned with a black and white penguin graphic, including a men’s briefcase, wallet and tie, as well as swim trunks and a women’s blouse, are infringing two-dozen trademarks covering logos for Original Penguin.
“By affixing a penguin design to numerous apparel and accessory items, defendant is creating a clear association in the minds of consumers between Thom Browne and the penguin trademark,” PEI said in its complaint. “Indeed, defendant’s infringement of the penguin marks is ubiquitous throughout its clothing line.”
Harley Lewin, counsel for Thom Browne, said the brand is “surprised and dismayed” by the lawsuit, since discussions had been ongoing with Perry Ellis over the issue.
“Thom Browne has not and has no intention of using a penguin as a trademark,” Lewin added. “He uses it as a design element and he’s very well known for switching these things. He’s used whales, dogs, turtles and so forth and the particular penguin design he’s used is not the same.”
Lewin compared the Original Penguin logo to Ralph Lauren’s Polo logo featuring a polo player on a horse, saying just because the brand has that trademark, “it does not own the right to all horses.”
“We’re inclined to view this as unfortunate, but not something that would rise to full blown litigation or trial,” Lewin said. “Obviously we’ve done our homework and if Perry Ellis wants a fight, we’ll defend ourselves.”
Original Penguin has been using its logo since the late Sixties, but it does differ from the image being used by Thom Browne. The Original Penguin logo is a frontal outline of a round penguin, while Thom Browne’s version is a profile in graphic black and white.
PEI said the Thom Browne products are being sold through retailers like Barneys, Bergdorf Goodman, Harrods and online with Ssense, and that the company should have been well aware of the penguin’s association with Original Penguin.
Had Thom Browne been somehow unaware, that would have changed by July, when PEI sent a cease-and-desist letter to the brand.
“Despite PEI’s subsequent demands that defendant immediately stop selling apparel and accessories featuring the penguin marks, defendant continues to willfully infringe and dilute the penguin marks,” PEI went on.
The company did not mention negotiations had been taking place, as suggested by Lewin.
As Thom Browne has allegedly refused to stop selling its penguin products, PEI asked the court for an injunction against the brand, and to order the destruction of all of the allegedly infringing products.
PEI is also seeking unspecified damages or any profits Thom Browne has realized from its penguin products.
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