Bloomingdale’s has been named in a trademark infringement lawsuit filed by seeming trademark troll, Robert Lopez. In his complaint, which was filed in the Southern District of New York court this week, Lopez, who splits his time between working as a paralegal and pursuing his clothing venture, alleges that the famed department store began selling a t-shirt bearing his federally registered “LES NYC” trademark during the summer of 2015. Lopez, who claims to have used the LES NYC mark since 1999, asserts that due to Bloomingdale’s “business status as a major retailer of apparel and accessories has the capability of causing reverse confusion where consumers of clothing products will think that all LES NYC clothing related products are sponsored or produced by [Bloomingdale’s].”
THE LES NYC TRADEMARK
Interestingly, Lopez has held the federally registered trademark for “LES NYC” since June 17, 2014, following an extensive battle with the U.S. Patent and Trademark Office (USPTO) over the mark, beginning in 2011. Lopez’s early attempts to register the mark were shot down by the USPTO, which held that the “LES NYC” mark was ineligible for registration because it “is primarily geographically descriptive of the origin of applicant’s goods.” As the USPTO noted in its Office Action (the formal document from the USPTO rejecting an application to register a trademark), a three-part test is applied to determine whether a mark is primarily geographically descriptive of the goods and/or services within the meaning of Trademark Act (and thereby ineligible for registration).
To this, Lopez responded, asserting that while the mark may be geographically descriptive, it was not merely that, as it had acquired a level of distinctiveness “in connection with clothing based upon his long standing and continuous use of the mark in interstate commerce.” As a result, Lopez argued that the mark was, in fact, operating as a trademark (aka an identifier of source) and thereby, should be registered.
And the USPTO seemed to agree, as its response – a second Office Action – did not include a claim of geographic descriptiveness but a claim instead that Lopez’s LES NYC mark was too similar to an existing trademark application of another to be registered. As a result, Lopez’s application was suspended in October 2011 until the other party’s application for the same or similar mark was processed.
Lopez’s application was revived in June 2013 and formally registered with the USPTO in June 2014 in Class 25, which extends to “Baseball caps and hats; Hooded sweatshirts; Short-sleeved or long-sleeved t-shirts; T-shirts.”
Interestingly, even before Lopez was awarded the LES NYC federal registration, he has been on quite a litigation spree in connection with the mark, filing lawsuits since 2007 against major retailers on state law trademark grounds. According to Law360, a number of the lawsuits that Lopez filed were, in fact, based on federal trademark claims and thus, had to be “trimmed down,” as Lopez held no federal rights in his mark.
As Bowery Boogie, a lifestyle website dedicated to New York’s Lower East Side, wrote in 2011: “Each time fashion behemoths attempt to capitalize on the popularity of the neighborhood designation, Lopez is there keeping them in check. Recent lawsuits of trademark infringement included cases against Aeropostale [he sued that company twice], Urban Outfitters, and the Gap.” Lopez has also filed lawsuits against J. Crew, Puma, Payless, Hanes, Macys, Sears, MITCHELL & NESS, and American Rag, amongst other retailers.
Not surprisingly, most of the aforementioned lawsuits have settled out of court with Lopez likely walking away with a monetary reward. Chances are, the retailers that have agreed to settle could have prevailed at trial, but it is both cheaper and less time consuming to settle the case than to pursue it in court. Having said that, Lopez lost at least one of the cases he filed, when U.S. District Judge Paul A. Engelmayer granted Gap’s motion for summary judgment, holding that Lopez “did not prove a likelihood of confusion between the two shirts that Old Navy was selling and [his] Lower East Side Co. products.”
DESIGNER OR TRADEMARK TROLL?
Considering the significant number of lawsuits that Lopez has filed against companies with deep pockets in connection with his trademark, it is certainly worth arguing that he may be acting far more like a trademark troll than an actual clothing designer.
As you may know, the term “troll” when used in connection with intellectual property has distinct definitions depending on what type of IP we are actually talking about. When used in a patent context, a troll (or "non-practicing entity" as the white house recently coined) is an entity that buys up ambiguous, vague or broad patents (typically patents that are not otherwise being used) and then tries to make money off of them by threatening to sue (i.e. demanding a license fee from) anyone who could arguably be said to be using them without permission ("infringing them"). When we are talking about copyright trolls, the focus is not on whether the party that is filing suit is actually a practicing entity or not (which is key in a patent troll context). Instead, a copyright troll is a party that enforces copyrights it owns for purposes of making money through litigation, in a manner considered unduly aggressive or opportunistic.
While we most commonly see trolls in the two aforementioned contexts, the concept does, in fact, apply in to trademarks, as well. It often takes the form of one party acquiring rights in a famous trademark before the legitimate trademark user is able to do so. We see this quite regularly in China, where native business people file to register famous Western marks, such as Apple or Hermès, before the Western brands do, and then either use the trademarks to sell counterfeit goods and/or attempt to demand a large sum of money from the legitimate trademark owner in exchange for the right to use its name in China.
Since Lopez is very clearly only operating in the U.S., we do not have a Chinese cybersquatting trademark troll on our hands. Instead, it appears that, if anything, Lopez is
operating more like a copyright troll (in a trademark context, however), as he is, in fact, using his “LES NYC” trademark on the clothing he offers for sale on his small web-based store. However, he also is filing a significant number of lawsuits in connection with his trademark. And chances are, he is doing so with the goal of extracting monetary settlements from the named defendants, which are larger brands with deep pockets and likely, the desire to settle cases.
With this in mind, we will have to wait and see how Lopez fares in his recently initiated battle with Bloomingdale’s and whether he pursues additional lawsuits in the future (our guess is, he will).