As part of a decade-long dispute in the World Trade Organization (WTO) involving US cotton subsidies, Brazil is again threatening significant trade retaliation against a wide variety of US goods and intellectual property rights. The proposed retaliation would substantially increase tariffs on US exports across various sectors and industries, and would suspend or restrict US intellectual property rights in Brazil. If enacted, the retaliatory measures could have a devastating impact on US businesses.
Arent Fox is the leading law firm for handling intellectual property issues for fashion and luxury goods clients. We have extensive experience protecting our clients’ brands and designs, and defending them from challenges to their marks and designs. Our attorneys have defended trademark, patent, and copyright lawsuits related to suits brought by competitors challenging our clients’ right to use their mark. We have also obtained groundbreaking court decisions in the area of counterfeit and grey market products such as when we successfully worked to essentially shut down Canal Street from selling one of our client’s products and won a decision against a large big box retailer from selling grey market goods.
In the first contributory trademark infringement suit brought by Coach Inc. (Coach) to make it to the trial phase, Coach recently settled its lawsuit against Swap Shop, Inc. (Swap Shop), the owners of a Fort Lauderdale, Florida flea market, for $5.5 million.
Plaintiffs Cartier International, Montblanc-Simplo GmbH, Alfred Dunhill Ltd., Chloe SAS, Officine Panerai AG and Lange Uhren GmbH scored a win against e-commerce counterfeiting when US District Judge Gary Allen Feess issued a permanent injunction against a Pakistan-based e-commerce site company, Tradekey Pvt.
While there are currently only about two dozen generic top-level domains (gTLDs), such as .com, .net, and .info, numerous public and private organizations recently filed applications for over 1800 new gTLDs. When clothing company Ralph Lauren Corporation applied for the exclusive right to operate the .POLO gTLD, a battle ensued with the U.S. Polo Association, Inc. (USPA), the national governing body for the sport of polo in America and Canada. This month, an expert panel at the International Center for Expertise of the International Chamber of Commerce upheld USPA’s so-called “Community Objection” against the .POLO application and denied Ralph Lauren’s application. See U.S. Polo Association Inc. v. Ralph Lauren Corp., ICE, No. EXP/452/ICANN/69, 10/10/13. Pursuant to the policies set forth in the Internet Corporation for Assigned Names and Numbers (ICANN) Applicant Guidebook, the panel’s findings are to be considered an expert determination, which ICANN will accept.
Bottega Veneta, one of the world’s premier fashion companies, recently won an important ruling regarding the scope of its trade dress rights at the Trademark Trial and Appeal Board (TTAB) of the US Patent and Trademark Office (USPTO).
Unlike many fashion companies that use the company name or well-known initials on their products to indicate source, Bottega’s leather goods use no such branding. Instead, Bottega’s purses, wallets, and related leather items, which can sell for upwards of $6,000 an item, often feature the company’s “signature” look, a box weave of slim strips of leather displayed at a 45 degree angle and covering all, or substantially all, of the product, as shown in the representative images at right.
As you may have heard, we are on the verge of a vast expansion of the Internet. Currently, there are only about two dozen generic top-level domains (“gTLDs”), such as .com, .net, and .info. However, there will soon be more than 1,000 new gTLDs, many of which are relevant to companies in the fashion and luxury goods industries. For example, third parties have applied for the right to operate .clothing and .fashion as new gTLDs. Other notable applications include .beauty, .boutique, .buy, .design, .home, .life, .lifestyle, .living, .luxe, .luxury, .sale, .shoes, .shop, .shopping, .store, and .style. Finally, a handful of premier fashion brands opted to apply for the exclusive right to operate the gTLD matching their brand, including .cartier, .chanel, .gucci, .hermes, and .tiffany, and some department stores also choose to apply for their brands, such as .bloomingdales. Fashion and luxury brands must therefore consider the impact of this gTLD expansion on their business and decide how to proceed, both offensively and defensively.
A recently filed court case demonstrates the ever-increasing competiveness of the fashion industry. Skechers U.S.A., Inc., alleged in its complaint that Perry Ellis International, Inc., and Shoe Confession LLC are selling a copied version of Skechers’ patented Skechers Go Run shoe. Skechers has filed suit against Perry Ellis and Shoe Confession, claiming patent infringement, trade dress infringement, and unfair competition, and is seeking to force Perry Ellis and Shoe Confession to stop making and selling the allegedly infringing merchandise. According to the complaint, Skechers’ shoe design is well-known: the company has spent more than $10 million in the last year promoting, marketing, and advertising the shoe, and it has sold hundreds of thousands of pairs.
On August 20, 2013, Marc Joseph NY, Inc. (Marc Joseph) filed an action before the US District Court for the Eastern District of New York against C. & J. Clark America, Inc. (Clarks) for trademark infringement and unfair competition of its “Cypress Hill” moccasin design.
Pursuant to Section 1502 of the Dodd-Frank Wall Street Reform Act, the Securities and Exchange Commission (SEC) issued final regulations on September 12, 2012 requiring publicly traded companies to disclose their use of “conflict minerals” in products they manufacture or have contract manufactured for them to proprietary specifications.
Overcoming the challenges of fighting organized crime networks involved in industrial scale illicit trade and counterfeiting, international partnerships recently led to 6,000 arrests and the seizure of 24 million fake goods worth nearly $133 million US dollars during INTERPOL-led operations codenamed “Black Poseidon II” (Europe), “Etosha” (Africa), “Hurricane” (Asia), and “Pacific” (the Americas) in May and June. Seized goods included fake consumer electronics, DVDs, mobile phones, tobacco, and cooking oil.
ABOUT ARENT FOX LLP
Arent Fox LLP, founded in 1942, is internationally recognized in core practice areas where business and government intersect. With more than 350 lawyers, the firm provides strategic legal counsel and multidisciplinary solutions to clients that range from Fortune 500 corporations to trade associations. The firm has offices in Los Angeles, New York, San Francisco, and Washington, DC.