CFDA to Fashion Week, Inc: New York Fashion Week Trademark is Ours

Now that the Council of Fashion Designers of America has acquired the rights to the New York Fashion Week Fashion Calendar (the formal calendar for scheduling NYFW shows), the NYC-based trade association is attempting to invalidate existing trademark registrations for the term "New York Fashion Week," including on that is held by Fashion Week, Inc. According to a recently filed petition, the CFDA is urging the U.S. Patent and Trademark Office (USPTO) to cancel Fashion Week, Inc.'s existing mark, alleging that it "believes that it has been and continues to be damaged [as a result of Fashion Week, Inc.'s mark], including as a result of a likelihood of dilution."

Fashion Week, Inc., a company that sells tickets to New York Fashion Week events (and according to online reviews isn't exactly the most legitimate business entity), has a trademark for "New York Fashion Week" that was registered by the USPTO on July 29, 2014. Interestingly, in 2007, IMG, the company responsible for producing the bi-annual event, filed to federally register the mark in two classes and not necessarily the ones you'd expect (for pillows and cushions and for bed linens), but subsequently failed to meet the registration requirement of use in commerce. As a result, the registration was abandoned.

Since then, the CFDA filed its own registration with the USPTO on March 20, 2014 for the New York Fashion Week trademark in Class 35, which covers "the organization of fashion shows for commercial purposes, namely, scheduling and administration of fashion shows during two biannual periods," and hit a road block when the USPTO filed an Office Action (a notification from the USPTO regarding problems with an application) last month. In its Office Action, the USPTO held that the CFDA's mark is not registrable, as it is confusingly similar to an existing mark: Fashion Week, Inc.'s NYFW mark. As a result, the CFDA has filed the petition to invalidate the existing mark.

With the necessary background info out of the way, we can focus on the matter at hand. The CFDA's basis for moving to cancel Fashion Week, Inc.'s trademark is this: The trade union and "its predecessors-in-interest" have established rights in and to the mark NEW YORK FASHION WEEK through their continuous use of the mark in commerce for decades, "at least since 1994, which is well prior to October 4, 2013, the first use in commerce date claimed by [Fashion Week, Inc.] for the NEW YORK FASHION WEEK Registration."

Why do these dates actually matter? Well, the U.S. Trademark system runs on a first-to-use basis. This means that it is not registration of a mark with the USPTO, but actual use of a mark, that creates rights and priority over others using the same or similar marks. Thus, the rule is that ownership of a mark goes to the party that is the first-to-use the mark, not the first-to-file a registration for the mark. In this case, the CFDA contends that it was the first to use the mark, and yet, it filed its application on an "Intent to Use"  basis, which means that it has not yet used the mark in commerce but plans to do so within six months of registration, as required by the USPTO. More to come …