Right on the heels of making headlines for shaking up its runway show model, Burberry has filed suit against J.C. Penney on trademark grounds. According to the London-based brand’s complaint, which was filed in the Southern District of New York court on Tuesday, in a "willful and intentional" attempt to “capitalize on the strength and worldwide fame of the BURBERRY CHECK Trademark, [J.C. Penney has] offered for sale and sold merchandise, including scarf coats and jackets, which display the BURBERRY CHECK Trademark or substantially indistinguishable reproductions thereof. Defendants have offered for sale and sold their infringing products without Burberry’s permission, authorization, or approval.” And as a result, Burberry wants upwards of $2 million in damages.
Burberry goes on to state in its complaint that such unauthorized use of its trademark-protected print (see two examples above) by J.C. Penney “is likely to cause, and has caused, consumers to believe mistakenly that the Defendants are either affiliated with, sponsored by or somehow connected to Burberry, or that the infringing products sold and promoted by Defendants either are genuine Burberry products, or, were endorsed or authorized by Burberry.” As you may know, a "likelihood of confusion" amongst consumers, which may take the form of consumers thinking two different companies’ products are somehow affiliated, is the key inquiry in a trademark infringement lawsuit.
As for what J.C. Penney items Burberry is taking issue with, the British brand writes: “Defendants have offered for sale and sold a 'Scarf Coat' that features an exact copy of the BURBERRY CHECK Trademark on a scarf sold with an accompanying coat. Neither the scarf nor the “Scarf Coat” was manufactured, packaged, or approved for sale and/or distribution by Burberry. Defendants have also offered for sale and sold a 'Quilted Jacket' that also features an exact copy of the BURBERRY CHECK Trademarks. The Quilted Jacket was not manufactured, packaged, or approved for sale and/or distribution by Burberry.”
And while Burberry claims that such items are, in fact, of “inferior quality,” they appear “superficially similar to genuine Burberry products." As a result, "Defendants’ actions are intended to deceive and mislead consumers into believing that Defendants’ or their products are authorized, sponsored by or connected to Burberry.”
As for why J.C. Penney's use of the Burberry trademark is so problematic, the brand does a rather nice job of summing it up: "Defendants’ use of the BURBERRY CHECK Trademarks dilutes and/or is likely to dilute the distinctive quality of those marks and to lessen the capacity of such marks to identify and distinguish Burberry’s goods. Defendants’ unlawful use of the BURBERRY CHECK Trademarks in connection with inferior, infringing goods is also likely to tarnish those trademarks and cause blurring in the minds of consumers between Burberry and Defendants, thereby lessening the value of the BURBERRY CHECK Trademarks as unique identifiers of Burberry’s products."
In addition to setting forth claims of federal trademark infringement, trademark counterfeiting, False Designation of Origin and False Descriptions and Representations, and trademark dilution, amongst other claims, Burberry alleges that J.C. Penney's actions "have and continue to irreparably harm Burberry and dilute the distinctive quality of the BURBERRY CHECK Trademarks. Defendants’ egregious conduct makes this an exceptional case."