The Fashion Law Exclusive - In a bit of a role reversal situation, Forever 21 is not on the receiving end of a string of newly filed lawsuits. Instead, the Los Angeles-based fast fashion giant has filed suit against an array of companies, alleging that they are copying its designs, as well as its name. According to the three multi-million dollar lawsuits that Forever 21 filed this past week in the U.S. District Court for the Central District of California, the retailer claims that Los Angeles-based wholesale fashion companies, Gala Fashion Corp., Pro Off Price, Inc., and In & Out Fashion, Inc., among others, are in the business of "importing, advertising, promoting, offering for sale, selling and distributing […] unauthorized and/or counterfeit Forever 21®-branded products bearing the Forever 21 trademarks."
Yes, that's right. Forever 21 is being copied. Forever 21 also claims that the "defendants have violated [its] exclusive rights in one or more [of the] Forever 21 trademarks by using the same to confuse consumers into thinking that the products purchased at Defendants’ stores are genuine Forever 21 products when they are in fact unauthorized products that do not originate from Forever 21."
In addition to the pure irony at issue here (since Forever 21 is an extremely notorious design pirate, as evidenced by the 50+ copyright lawsuits that had been filed over the past several years against the brand by designers have been copied), are the claims that Forever 21 makes in regard to its trademark rights. Forever 21's legal team puts it quite interestingly, writing: "Forever 21 designs and sells innovative, fashionable clothing, clothing and accessories and accessories exclusively through its online website www.Forever21.com and its own Forever 21 retail outlets … Forever 21 has become well-known to consumers through its hard work, innovation and substantial investment in branding. As a result of its endeavors, Forever 21 has created and owns valuable intellectual property in the form of trademarks."
There really is not much room to debate whether Forever 21 has significant trademark rights (the complaint lists at least 25 federally registered trademarks) and equally strong brand awareness associated with those marks. The extent to which the brand is "innovative" or has any real "good will" associated with its brand, however, is very much up for debate, although it is beside the point in terms of legality.
Forever 21 is claiming five causes of action, alleging that the defendants infringed and diluted its rights in the Forever 21 trademarks; misled the public into believing there is an association or connection between Defendants and Forever 21 and/or the products advertised and sold by Defendants and Forever 21; used false designations of origin on or in connection with its goods and services; committed unfair competition; caused Forever 21’s vendors to breach their agreements with Forever 21; and unfairly profited from such activities. And in true Forever 21 form, the brand is asking for major remedies. It wants monetary damages, and other remedies, "including Defendants’ profits, treble damages, statutory damages, reasonable attorneys’ fees, costs and prejudgment interest."
I'd say "more to come" but chances are, this case will settle out of court and we won't hear another word.