So, Liz Claiborne Inc. is struggling and selling its Liz Claiborne brand. The company will maintain its higher end brands, Juicy Couture, Lucky Brand and Kate Spade, in hopes of revamping the company. So, what does this sale entail? Liz Claiborne said it will sell the domestic and international trademark rights for both its Liz Claiborne brands and the U.S. and Puerto Rico trademark rights for the Monet jewelry brand to department store operator J.C. Penney Co. for about $288 million. The Liz Claiborne brands include Liz Claiborne, Claiborne, Liz, Liz & Co., Concepts by Claiborne, LC, Elizabeth, LizGolf, LizSport, Liz Claiborne New York and Lizwear. Claiborne Inc is also selling its Kensie brands to Bluestar Alliance and completed the sale of its Dana Buchman brand to Kohl's Corp. on Monday, with both transactions bringing in proceeds of about $40 million.
In keeping with the higher end of its brands and focusing more on up-scale designs, Liz Claiborne is allegedly changing its name to reflect that emphasis. When I first heard that the Claiborne corporation was changing its name, I thought was had a JA Apparel v. Joseph Abboud-kind of situation on our hands, but apparently Liz Claiborne said it plans to eventually change its name to better reflect its new focus.
I think its important to note the JA Apparel v. Joseph Abboud case, which is a true cautionary tale for designers when considering using your personal names as brand names
Fashion designer, Joseph Abboud, began selling his men’s clothing line in 1987 under the trademark JOSEPH ABBOUD. Due to the commercial success and critical acclaim of JOSEPH ABBOUD clothing and accessories over the years, Mr. Abboud and the JOSEPH ABBOUD brand became well-known and respected in the fashion industry.
In 2000, Abboud entered into an agreement to sell all of his rights in and to the “names, trademarks, trade names, services marks, logos, insignias and designations” and “all rights to use and apply for the registration of new trade names, trademarks, service marks, logos, insignias and designations containing the words ‘Joseph Abboud,’ ‘designed by Joseph Abboud,’ ‘by Joseph Abboud,’ ‘JOE’ or ‘JA,’ or anything similar to or derivative thereof, either alone or in conjunction with other words or symbols ...,” to JA Apparel, for $65.5 million.
Abboud later decided to create and market a new high-end men’s clothing line under the trademark JAZ. The designer’s new venture attracted significant attention from the press, including news articles reporting Joseph Abboud’s intentions to use his personal name in connection with marketing and advertising for the JAZ clothing line.
JA Apparel thereafter brought suit against Abboud in the United States District Court for the Southern District of New York seeking, among other things, an injunction preventing the designer from using his name commercially in connection with the promotion and sale of products which competed with JA Apparel’s products. The court ended up prohibiting Abboud from using his personal name “as a trademark, service mark trade name or brand name” or in any manner on the clothes themselves, hangtags, clothing labels or packaging.
The court further held that should Abboud use his name in connection with promotions or advertisements, the name: [M]ust be used descriptively, in the context of a complete sentence or descriptive phrase, and must be no larger or more distinct than the surrounding words in that sentence or phrase.