"[Clothes] by any other name..."

Posted by Charles Colman

As Mr. Helmut Lang, Ms. Jil Sander [but see "UPDATE 2" below -- and now "UPDATE 3"], and especially Mr. Joseph Abboud might tell you, the use of designers' names as trademarks is a major issue in fashion law. As you have probably read about in the news, several members of the extended Gucci family might agree with them. And given that, as WWD reported yesterday, Ralph Lauren's nephew Greg "is set to launch his own high-end men’s and women’s collection this spring," it seems a particularly appropriate time to review the rules of the fashion name game. (In an effort to set a record for the number of disclaimers/disclosures in a single paragraph of a blog posting, LOF wishes to point out that 1) it has no knowledge of the brand name Greg Lauren intends to use, or of Ralph Lauren's (or Mr. Ralph Lauren's) position on young Greg's plans; and 2) this writer's previous law firm represented, at one time or another, a) Polo Ralph Lauren, and b) the company that bought the rights to the Joseph Abboud trademark.)

 

Now, down to business. One might reasonably think that s/he could do business using his or her given name, even if that name happens to be "taken" by an established company. Not so. Courts are certainly more cautious about preventing the coincidentally or consanguineously named "McDonalds," "Fords," and "Duponts" of the world from using their names in commerce, but they will not hesitate to issue injunctions -- even if "narrowly tailored" -- when the famous-named individual's activities are likely to mislead the public as to the source of goods or services.

 

The "Gucci" name has been the source of perhaps the most frequent and high-profile disputes concerning the family-name-as-trademark. In a 1988 case, for example, Paolo Gucci sought a declaratory judgment that he had the right to use his given name in connection with clothing of his own creation, notwithstanding the trademarked Gucci brand that he had been involved in running for years, before an epic falling-out. The court analyzed the "likelihood of confusion" among consumers, should Paolo be allowed to use his name in the apparel marketplace, applying the so-called Polaroid test LOF has discussed in prior posts. In a passage that presaged the outcome of the case, the court observed: "The great strength of the 'Gucci' mark, the very close similarity between the mark 'Gucci' and the name 'Paolo Gucci' and the near identity of the nature of the primary products bearing those names creates a likelihood that an appreciable number of ordinarily prudent purchasers will be misled or confused as to the source or sponsorship of goods which bear plaintiff's name as a trademark or trade name." The court concluded that Paolo could make only limited use of his name in connection with clothing:

 

"[I]n order to protect the interests of [the Gucci company] in the 'Gucci' name, Paolo is enjoined from using 'Paolo Gucci' as a trademark or trade name. To enable Paolo to exploit his own talents and identity, however, he is entitled to use his name to identify himself as the designer of products sold under a separate trademark which does not include the name 'Gucci.' To avoid confusion, the name Paolo Gucci must always appear after the trademark in advertisements and on labels, and must be no more prominent than the trademark. Moreover, plaintiff must use a disclaimer, similar to the one he now employs, which notifies consumers that he is no longer affiliated with any of the Gucci entities."

 

Where the latecomer with the "big name" has demonstrated bad faith, however, courts will not be so "generous." Fashion law acolytes may recall a similar, and much more recent, dispute involving Paolo's widow, Jennifer Gucci, and their daughter, Gemma Gucci. The women, along with affiliated individuals and companies, were slapped with a lawsuit by the Gucci company after they used the "Gucci" name to sell, among other things, clothing and gelato. Discovery in this case was a disaster, involving concealed evidence, lawyers begging to be relieved of representing their clients, and other shenanigans. This rocky path may very well have affected the outcome of the case, which was a stern ruling in favor of the Gucci company that included compensatory damages, attorneys' fees, litigation costs, and perhaps most importantly -- for the company, anyway -- a virtual guarantee that Jennifer and Gemma would never again use the "Gucci" name in commerce.

 

In an even higher-profile case, the Gucci Group recently sued Elisabetta Gucci, the great-granddaughter of the company's founder, after she announced her intention to put her name behind a luxury hotel in Dubai. Unlike the previous cases, which were filed in Manhattan, this one was brought in Florence, meaning the court documents are harder to get one's hands on (leaving aside the language barrier.) However, in July of 2010, Bloomberg BusinessWeek reported that the Gucci Group had won an injunction preventing Elisabetta from carrying out her plan.

 

As noted above, when courts do not detect misconduct on the part of the "junior trademark user," they are somewhat sympathetic to individuals involuntarily deprived of the right to use their name in commerce -- even if our legal system has largely discarded the once-prevailing view that each person has a "natural right" to use his name in commerce.

 

However, courts will not show such sympathy when the junior user has sold the rights to a trademark containing his or her name -- in effect, sealing his own fate. Such were the allegations in the long-running case of JA Apparel v. Abboud, where designer Joseph Abboud sold his eponymous trademark to JA Apparel for a hefty sum, then later began marketing clothing under the brand name "jaz" -- often accompanied by the name of jaz's designer... one "Joseph Abboud."

 

This must have been a very expensive case to litigate. In round one, the district court ruled that the contract between Abboud and JA was unambiguous: Mr. Abboud had sold the rights to use his name in connection with clothing, and that was that. Nor was Abboud making "fair use" of his name, as permitted under the federal Lanham (trademark) Act. (N.B. Trademark and copyright "fair use" are completely different. We're talking about trademark, not copyright, fair use here, which basically means a good-faith use of someone else's trademark that is necessary to describe the user's goods, even if some confusion might result among consumers. Have no fear: copyright fair use will undoubtedly come up in a later post.)

 

On appeal, the Second Circuit disagreed with the district court, finding the contract ambiguous on the question of whether Mr. Abboud would be able to continue using his name in a commercial manner after the deal closed. The Circuit Court thus remanded the case for additional fact-finding, and for another attempt at the "fair use" analysis, which the appellate court felt had been incorrectly conducted the first time around.

 

In round three, which concluded in January 2010, the district court dutifully followed the Second Circuit's instructions, analyzing the issue from scratch and issuing a very precise injunction against Mr. Abboud:

 

   • Abboud was not entitled to use his name as a trademark.

 

   • Abboud was not entitled to use his name on "jaz" clothes, labels, or product packaging.

 

   • Abboud was entitled to use his name in promotional and advertising materials, but only "in the context of a complete sentence or descriptive phrase," and only if the name was printed in the same size and font as the surrounding words. In any such materials, the "jaz" trademark would have to be the most prominent text.

 

   • However, anytime Abboud used his name in this manner, he was required to include "a disclaimer of any affiliation with JA Apparel and products sold under the Joseph Abboud trademarks." This disclaimer would also have to appear in the same size and font as his name.

 

(Note the similarity between this injunction and that issued in the Paolo Gucci case.)

 

In short, modern courts have found that designers have no "natural" or "inalienable" right to use their own names to sell their apparel, particularly when they have cashed in those rights. Where an individual happens to have been born with a name already "taken" by a famous brand, courts will try to craft injunctions such that the junior user can make some use of his name. But even in these situations, courts will not allow the name to serve as the trademark -- only as accompanying information -- and a disclaimer may be required.

 

Let's quickly return to the news about Greg Lauren's career goals. We'll presume Greg won't be using "Polo" or "Ralph Lauren" as his trademark. We'll further presume that neither "Polo" nor "Ralph Lauren" will appear anywhere on Greg's advertising materials, or on the garments themselves. (Greg, if your lawyers have given you the go-ahead on either course without obtaining the permission of your uncle's company, let's talk.) Instead, let's suppose Greg decides to use the brand name "Lauren" (and that no one else is using that exact brand name.) To me, this presents a much closer legal question than the cases described above. After all, we probably share the intuition that "Lauren" isn't nearly as strong (i.e., unique) a mark as "Gucci." Indeed, as properly pronounced (note: "Lauren," unlike, say, "Laurent," is *not* a French name), this word is among the top 25 most popular names for baby girls born in the U.S. today. True, using the name "Lauren" in connection with clothing may raise a judge's hackles, but I'm still not sure there is a sufficient likelihood of confusion -- at least absent use of the P/RL font -- to give rise to liability or an injunction. (Recall that trademarks need not be identical for liability to follow; only a "likelihood of confusion" is required.) The trademark "Greg Lauren," should he opt for that, even further differentiates the nephew's mark from his uncle's. But even this mark probably presents a close enough question for a painful and expensive factual dispute over likelihood of confusion (particularly given the wrinkle that "Lauren" is not Ralph's birth name, so it's highly unlikely that it is the birth name of his nephew.) So let's hope Greg's uncle (and his company) are on board with Greg's plans. And let's wish Greg good luck -- though he doesn't appear to need it, as Barneys has already picked up his line.

 

Don't worry, IP lawyers: I'm going to discuss trademark dilution claims in a later post. Patience!

 

[UPDATE: As promised, LAW OF FASHION tackles trademark dilution.]


[UPDATE 2: Jil Sander might not belong on this list anymore, but Simon Spurr can take her place.]

 

[UPDATE 3: Jil Sander might belong on the list again.]


[This post is for entertainment and informational purposes only, and does not constitute legal advice or create an attorney-client relationship among any individuals or entities.  Any views expressed in this post or at the linked web pages are those of the writer on a particular date, and should not necessarily be attributed to this writer, his law firm, or its clients.  LAW OF FASHION does not and cannot warrant the thoroughness or accuracy of the content at the linked web pages.]