Fashion Counsel with Anthony V. Lupo

Arent Fox's fashion law blog offers news, analysis, and insights for the industry from fashion attorney Anthony Lupo.

Fashion Counsel with Anthony V. Lupo

JC Penney Quickly Settles Suit With Burberry Over Alleged Counterfeit Check Pattern

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JC Penney Quickly Settles Suit With Burberry Over Alleged Counterfeit Check Pattern

A case filed by Burberry Ltd. earlier this year against JC Penney Corp Inc. in the Southern District of New York for trademark infringement, and related state and federal unfair competition claims over JC Penney’s use of a checkered pattern on coats appears to have quickly been resolved. Burberry Ltd. et al., v. J.C. Penney Corp. Inc., No. 1:16-cv-00982 (S.D.N.Y. 2016). In addition to state and federal trademark infringement, Burberry also asserted the more serious claims of trademark counterfeiting, which carries with it statutory penalties.
 
The check patterns at issue were as follows:
 
Burberry Check Pattern:

JC Penney Scarf Coat:


JC Penney Quilted Jacket:


In its complaint, Burberry alleged that JC Penney, and JC Penney’s supplier, the Levy Group, intentionally and willfully used, reproduced, and copied the Burberry Check in connection with the sale of a “scarf coat” and quilted jacket without Burberry’s permission. Burberry also asserted that although JC Penney’s allegedly infringing products were of inferior quality, they appeared superficially similar to genuine Burberry products, which would deceive and mislead consumers into believing that JC Penney’s products had been authorized, sponsored by, or connected to Burberry. Additionally, Burberry claimed that J.C. Penney’s continued sale of the scarf coat and jacket pursuant to receiving a warning from Burberry constituted willful infringement.
 
In response, JC Penney alleged that the Levy Group was responsible for indemnifying JC Penney for any infringement actions. On March 8, 2016, Burberry filed a notice of voluntary dismissal with prejudice and the case was subsequently dismissed. The parties appeared to have quickly settled the matter as JC Penney has removed the allegedly infringing products from its website. However, the remaining terms of any settlement remain unknown.
 
Burberry has alleged use of its famous check pattern, the “Burberry Check,” since the 1920s and owns several incontestable trademark registrations for this design. Burberry uses the Burberry Check in connection with a wide variety of goods, including apparel, luggage, handbags, and other items. This recent suit is one of many lawsuits that Burberry has initiated to protect the Burberry Check.  See e.g., Burberry Ltd. et al v. Iconix Brand Group Inc., No. 1:07-cv-07541-lap (S.D.N.Y. 2007); Burberry Ltd. et al. v. The TJX Cos. Inc., Case No. 10-cv-01711 (S.D.N.Y. 2010).
 
Please contact Anthony V. LupoMichelle Mancino Marsh, or Janice Goh with any questions.

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