A growing controversy over the use of a widely-known phrase in the New York fashion industry is a perfect example of why you need to protect your trade names and marks immediately.
If you are fashion-forward, or a New York resident, then you have probably heard of the phrase “New York Fashion Week,” which signifies a week-long grouping of events where designers reveal their latest creations put on by the Council of Fashion Designers of America (“CFDA”) and WME-IMG (formerly known as William Morris Endeavor.)
Recently, CFDA and WME-IMG were sued by Fashion Week, Inc. for infringing upon its use of the trademarked phrase “New York Fashion Week.” The lawsuit follows a ruling from earlier this year by the Trademark Trial and Appeal Board (TTAB) determining that CFDA and WME-IMG do not have legal rights to the name.
In that trademark proceeding, CFDA argued that the trade organization and “its predecessors-in-interest have established rights in / to the mark “New York Fashion Week” through its continuous use of it in commerce since 1994 – prior to October 4, 2013, which Fashion Week, Inc. first used it, according to its registration. These dates are significant because the U.S. trademark system is run on a “first-to-use” basis, meaning that trademark registration with the USPTO doesn’t create rights or priority over others use the same or similar trademarks. In short, whoever used it first, in this case, the CFDA, owns the trademark.
Normally, this is a solid legal argument. But, the problem CFDA ran into is that it sat on its rights.
According to the TTAB decision, CFDA failed to take sufficient measures to effectively prosecute its case after it filed a Petition to cancel the registration against Fashion Week, Inc. Fashion Week, Inc. took advantage of this by asking the TTAB to dismiss the case, which it did.
This leaves CFDA in a very poor situation. CFDA cannot use “New York Fashion Week” without Fashion Week, Inc’s permission. Fashion Week, Inc. also owns “NYFW” as a federally registered trademark in connection with “[e]ntertainment in the nature of fashion shows,” and “[o]rganization of fashion shows for entertainment purposes.” Fashion Week, Inc. has also applied for the trademarks “New York Fashion Week The Shows” and “NYFW The Shows” with the U.S. government.
There are many lessons to learn from this cautionary tale. First, just because you use a mark does not necessarily make it yours. Second, do not sit on your rights when it comes to competing for a trademark – because someone else may recognize the value of your trademark and take it out from under you. Finally, you need to be proactive in your approach to defending your trademarks, which includes hiring a trademark attorney to register and monitor your trademarks.
*Gene Berardelli may be contacted at: GeneBerardelli@ipglegal.com
Gene is a New York street-smart attorney with an extreme passion for success. Gene specializes in litigation, arbitration and general corporate law for New York-based and international clients. He, also, is the host of a popular New York talk radio program.
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