Yesterday we told you that Nasty Gal is currently selling t-shirts with some awfully familiar logos on them. The most blatant: its Fancy Bones Tee (above right). CHANEL got wind of our post, and the company's legal department is taking action to protect the trademarked logo. A CHANEL spokesperson told The Fashion Law: "CHANEL is writing Nasty Gal a cease and desist letter to stop the infringing sales and we hope that they will comply so that this matter can be resolved without the need to file a lawsuit."
This comes as no surprise as CHANEL diligently polices unauthorized use of its mark. You may remember that Karl Lagerfeld's design house infamously put an ad in WWD two years ago warning against trademark infringement, saying: "PLEASE DON’T ... We take our trademark seriously."
For the uninitiated trademark infringement is the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services.
To support a trademark infringement claim in court, a plaintiff must prove that it owns a valid mark, that it has priority (its rights in the mark(s) are "senior" to the defendant's), and that the defendant's mark is likely to cause confusion in the minds of consumers about the source or sponsorship of the goods or services offered under the parties' marks. When a plaintiff owns a federal trademark registration on the Principal Register, there is a legal presumption of the validity and ownership of the mark as well as of the exclusive right to use the mark nationwide on or in connection with the goods or services listed in the registration. These presumptions may be rebutted in the court proceedings.
Generally, the court will consider evidence addressing various factors to determine whether there is a likelihood of confusion among consumers. The key factors considered in most cases are the degree of similarity between the marks at issue and whether the parties' goods and/or services are sufficiently related that consumers are likely to assume (mistakenly) that they come from a common source. Other factors that courts typically consider include how and where the parties' goods or services are advertised, marketed, and sold; the purchasing conditions; the range of prospective purchasers of the goods or services; whether there is any evidence of actual confusion caused by the allegedly infringing mark; the defendant's intent in adopting its mark; and the strength of the plaintiff's mark.
UPDATE: As of now, the t-shirts are no longer for sale on Nasty Gal's website, and a CHANEL spokesman told The Fashion Law: "We wrote them a cease and desist letter and we are glad they complied. We previously had taken action against the manufacturer."