New York-based men’s wear brand Thaddeus O’Neil is the latest brand to face off against a larger, older one with a similar name, highlighting a consistent concern in the fashion industry. In political fashion, a New York federal court judge has ordered Ivanka Trump to testify under oath in the latest development in the closely watched copying lawsuit filed against her by Aquazzura. And in China, authorities have taken to lashing out against reports that it is the source of the majority of fake goods in the European Union and a threat to U.S. intellectual property.
The Name Game
A battle between New York-based men’s wear brand Thaddeus O’Neil and Southern California-based surfwear company O’Neill is shedding light on the ever-present legal issues surrounding brand names. According to O’Neill’s opposition to Thaddeus O’Neil’s pending trademark application for the Thaddeus O’Neil name, the men’s wear designer’s mark “is likely to cause confusion with [O’Neill’s own] registered marks.” The surf brand has also alleged that it “believes it will be damaged by registration of the [Thaddeus O’Neil] mark,” especially given the surf-inspired nature of his brand.
The matter is an apt reminder that designers are not legally entitled to use their own names in a commercial way if their name is the same as or “confusingly similar” to a trademark that is already being used on the same or similar goods or services. This was the key takeaway in the case that Chanel filed — and won in 2014 — against an Indiana-based woman named Chanel Jones over a spa and beauty salon, branded as Chanel’s Salon.
In that case, Chanel argued that there is “no absolute right to exploit one’s given name commercially if such use is inconsistent with Chanel’s rights.” While the court agreed, it clarified that its ruling was in no way meant to “prohibit Jones from using her personal name solely in a personal, non-commercial capacity, or to otherwise identify herself,” as long as she was not doing so in a way to suggest she was in any way affiliated with the Paris-based design house.
This tends to prove an unpleasant reminder for individuals seeking to brand their companies in a personal way, often only to be trumped by the ramifications of selling off an eponymous label — and the exclusive rights to its branding. Such a move often prevents the designer from using his/her name on later ventures. Just ask Kate Spade, who has, since selling her label, legally changed her name to Kate Valentine to launch a new brand sans any consumer confusion and/or legal ramifications with her original label’s owner. She first sold the Kate Spade brand to Liz Claiborne Inc., which itself eventually re-branded to Kate Spade & Co. before recently being acquired by Coach Inc.
Political Fashion: Trump to Testify
In case it looked like first daughter Ivanka Trump may have been able to avoid testifying under oath in the lawsuit filed against her brand by Italian footwear Aquazzura, a New York federal court judge has said, no way. Amid even more reports that Ivanka Trump brand footwear is being manufactured in factories where grave human rights abuses run rampant, Judge Katherine Forrest of the U.S. District Court for the Southern District of New York has ordered Trump to take part in a two-hour deposition in connection with the trade dress and design patent infringement lawsuit.
Trump’s legal team fought hard to shield her from testifying in the case, arguing that she “was not involved in the design, promotion or sale of the shoe,” she “doesn’t have any relevant information about the shoes,” and her schedule is extremely limited due to her status as a “high-ranking government employee.”
As Aquazzura’s legal team pointed out, such statements run afoul of Trump’s public persona of being extremely hands-on in the running of her brand, at least before she stepped away from it — albeit temporarily — in order to devote her time to her father’s presidency and to attempt to avoid claims of ethical missteps and unfair competition.
Siding with Aquazzura, Forest ruled early this week, holding, “Ms. Trump’s public statements regarding active and comprehensive brand management lead to a reasonable inference that the shoe at issue would not have been released without her approval.” She added, “In such a situation, a deposition is appropriate.”
The deposition will be limited to a two-hour time slot and must take place before October, per Forest’s decision.
A Pattern Is Emerging in China
China has denounced another report slamming its efforts to cut down on the manufacture and export of counterfeit goods. This marks the second time in recent months that Chinese authorities have taken such a defensive stance. This week, China’s Commerce Ministry spokesman Sun Jiwen spoke out against a report compiled and distributed by Europol and the European Union Intellectual Property Office, which found that the country is the source of the vast majority of fake goods sold in the European Union.
Jiwen called the report “irresponsible” and questioned “the authenticity and objectivity” of the data upon which it was based, including that counterfeit goods amounted to about 12.5 percent of China’s total exports and more than 1.5 percent of the country’s GDP last year.
The EU report comes just two months after the Trump administration released its first “Special 301” Report in conjunction with the Office of the U.S. Trade Representative. That report — an annual offering that aims to identify countries that do not provide “adequate and effective” protection of intellectual property rights or “fair and equitable market access to U.S. persons that rely upon intellectual property rights” — similarly highlighted China as a serious and consistent threat to U.S. intellectual property.
On the heels of the release of the Special 301 Report, Jiwen similarly lambasted its findings, stating that the report “lacks objective standards and fairness.”
Meanwhile, Chinese IP laws continue to prove largely fruitless and difficult to navigate for non-native entities, despite the nation’s adoption of seemingly positive trademark provisions that, in theory, make it easier for trademark holders to fight bad faith filers and cybersquatters. Nonetheless, China remains a jurisdiction full of pitfalls for even the most famous brand owner, as cybersquatting and counterfeiting remain active and profitable business models.
Julie Zerbo is the founder of The Fashion Law.