Behind the scenes of Yoga Smoga’s bankruptcy proceedings and in the midst of a sexual misconduct investigation of Guess co-founder Paul Marciano, which prompted him to step down as executive chair of the company’s board, the two companies have been locked into a string of ugly legal battles of their own. For the past 5 years, the New York-based yogawear-maker claims that it has been the subject of “improper, abusive, and harassing actions” by GUESS, which has been “filing meritless legal actions” in order to “interfere with [Yoga Smoga’s] efforts to use its trademarks and revitalize the brand.”
In the complaint that it filed with the U.S. District Court for the Southern District of New York this week, Yoga Smoga claims that since in 2013, GUESS has been initiating proceedings against Yoga Smoga “in Federal Court and with the U.S. Patent and Trademark Office” in furtherance of its quest to preventYoga Smoga from “commercializing the intellectual property it purchased from the Bankruptcy Court at significant cost.” (Yoga Smoga founder David Kazan purchased the brand’s intellectual property back from the bankruptcy court this year).
According to Yoga Smoga, it all started in 2013 when the nearly 40-year old American fashion brand filed a formal opposition to one of the yogawear company’s pending trademark application for a logo consisting of “a series of upside down triangles with a smaller hanging/floating triangle within the larger triangles.” GUESS reason for the opposition? It argued that the triangular mark is too similar to its own already-registered upside down triangle trademark, which it has used since the early 1990s.
Yoga Smoga asserts in the case at hand that while GUESS may have a history of using the triangle mark, it lacks rights in the mark because the triangle graphic is “merely descriptive, is diluted, and does not function as a trademark, as a result of the significant and long standing third party use of the same or similar triangles on clothing.”
“Many third party users of triangle marks on clothing,” Yoga Smoga argues, including “well-known clothing company Prada has registered and has used trademarks containing triangles for as long as, if not longer than GUESS.”
While the two companies were embroiled in the opposition proceeding, which is still underway before the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (“TTAB”), Yoga Smoga claims that GUESS went on to engage in “malicious prosecution” by filing a trademark infringement and unfair competition lawsuit against it in a federal court in California in June 2019, a case that centers on Yoga Smoga’s use of the allegedly infringing triangle mark. And the American retailer did not stop there: it initiated yet another proceeding before the TTAB in August 2019.
In the most recent proceeding before the TTAB last month, GUESS has asked the trademark body to cancel two already-registered trademarks that cover the word “YOGASMOGA,” alleging that there is a likelihood of confusion between its “GUESS” word marks and the “YOGASMOGA” word marks.
As Yoga Smoga asserts in the case at hand, “In the cancellation [proceeding], GUESS has the audacity to allege that YOGASMOGA is pronounced as ‘YO—GUESS—MOGA,’” and thus, is likely to cause confusion amongst consumers as to the source of GUESS products. This claim, Yoga Smoga asserts, “is wholly without merit, [is] factually unsupportable, and [was] filed for the improper purpose of harassing [Yoga Smoga and Hazan].”
Not only do the aforementioned proceedings demonstrate GUESS’ “misuse and abuse [of] the legal system,” Yoga Smoga asserts that they were all initiated in order “to force [Yoga Smoga and Hazan] to agree to an unreasonable settlement and prevent [them] from using [their] triangle trademarks and the YOGASMOGA trademarks.”
With all of this in mind, Yoga Smoga has filed for declaratory judgment, asking the court to determine that, among other things, its use of its triangle trademark does not infringe GUESS’ mark. The company has also requested injunctive relief to preliminarily and permanently bar GUESS from engaging in any further harassment and from taking any further action to prevent or disrupt Yoga Smoga from using its triangle trademarks and the YOGASMOGA marks.
*The case is Yoga Smoga LLC et al v. Guess? IP Holder L.P., 1:19-cv-07974 SDNY).