* This article was originally published on the Arent Fox Fashion Team blog: Fashion Counsel
On September 11, Tommy Hilfiger U.S.A., Inc. and Tommy Hilfiger Licensing LLC (Tommy Hilfiger) filed an action for declaratory judgment against Jumbo Bright Trading Limited (Jumbo Bright) in the US District Court for the Southern District of New York. Tommy Hilfiger has asked the court to find that its use of a vertical stripe pattern on the inside lining of its shoes does not violate Jumbo Bright's common law trademark.
Tommy Hilfiger is an internationally known apparel, accessory, and footwear brand that, according to its complaint, has long used a vertical stripe pattern known as the Ithaca Stripe on many of its products in various colors including in blue and white. The Ithaca Stripe was featured in shoes from Tommy Hilfiger’s women's spring 2007 and 2013 collections.
Jumbo Bright, which distributes footwear under the brand CHARLES PHILIP, claims to own common law trademark rights in a vertical stripe pattern on the interior lining of its shoes. On March 25, 2013, Jumbo Bright sent a letter to Tommy Hilfiger demanding that Tommy Hilfiger cease all use of the Ithaca Stripe and any other confusingly similar designs in its shoes. Tommy Hilfiger denied any wrongdoing, and in response to Jumbo Bright's continued demands, filed an action for declaratory judgment.
In its action, Tommy Hilfiger asserts that Jumbo Bright's alleged vertical stripe design cannot function as a trademark because it is ornamental and therefore fails to distinguish Jumbo Bright's goods from those of others. Moreover, even if Jumbo Bright's design could act as a trademark, Tommy Hilfiger argues that the design has not acquired secondary meaning as required by law. Accordingly, Tommy Hilfiger requests the court to find that a likelihood of confusion between the parties' respective stripe designs cannot exist.
Elements of fashion designs such as color schemes and stripes are protectable as trademarks so long as the design is not functional and has acquired distinctiveness. This case not only highlights the burden placed on such designs to establish trademark rights, but also the importance of being able to prove those rights even at the early stages of enforcement. While sending demand letters can be an effective tool to curb infringement, trademark owners should be prepared to face declaratory judgment actions in response to their enforcement attempts. Arent Fox will continue to monitor this case and other cases involving the intellectual property protection of fashion designs. Please contact Anthony V. Lupo or Luna M. Samman with questions.
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