Last month, the US District Court for the Southern District of New York denied injunctive relief to clothing designer and retailer Saturdays Surf LLC for trademark infringement asserted against Kate Spade LLC.1
Kate Spade filed the lawsuit against Saturdays Surf seeking a judgment that Kate Spade’s use of the trademark “Kate Spade Saturday” did not infringe upon the mark “Saturdays Surf NYC.” In response, Saturdays Surf filed a counterclaim alleging that Kate Spade Saturday infringed on its trademark rights.
In assessing whether consumers would be confused by the two marks, the Court focused primarily upon the distinctions between the two lines of clothing and the consumers to whom they are marketed. Acknowledging that the two marks are somewhat similar in sight, sound, and appearance, that both marks are used on high quality clothing marketed to sophisticated customers, and that both marks share the word Saturday, the Court’s decision emphasized that there is nonetheless a significant competitive distance between the two lines.
The Court decided that Kate Spade Saturday was designed and marketed for women only, with approximately 40 percent of sales being dresses. By contrast, the Court ruled that a majority of Saturday Surf apparel is designed for men, with only a handful of unisex or women’s items. The Court also found that the bright colors and patterns on Kate Spade clothing in contrast to the Saturdays Surf’s neutral palette distinguished them from one another. On the other hand, the Court found that both companies sold their lines on their own websites and that, while Kate Spade Saturday plans to sell its products in its own stores, Saturdays Surf NYC products are already sold in its two stores and in major retail department stores. These factors, in the district Court’s view, suggested that consumers would not be confused by the use of the two marks on clothing.
Reverse trademark confusion — in which consumers confuse the initial user of a mark with a later, but more well-known user — was also at play. Saturdays Surf NYC argued that Kate Spade’s fame would actually lead consumers to believe it was a licensee of Kate Spade or, perhaps, an infringer. But the Court rejected this argument. Reasoning that Kate Spade’s name is very much associated with women’s clothing and apparel, the court held that it is unlikely consumers would believe Kate Spade Saturday would license the mark to or collaborate with a men’s clothing company.
In sum, the Court held that the relative weakness of the word that the two marks share — Saturday — coupled with the difference between the men’s and women’s products, resulted in no likelihood consumers that would confuse the two marks. Arent Fox is continuing to monitor cases involving the intellectual property protection of fashions designers. Please contact Anthony V. Lupo, Bernice K. Leber, or Leah C. Montesano with questions.
1 Kate Spade LLC v. Saturdays Surf LLC, 12 CIV. 9260 MGC, 2013 WL 2986454 (S.D.N.Y. June 17, 2013).