Lyst is waging a trademark battle against Lystable, an online service aimed at “helping teams manage their freelancers with ease.” The fashion site, “one of the world’s leading e-commerce marketplaces for fashion and fashion accessories,” filed suit against the like-named site this past week in the U.S. District Court for the Southern District of New York, alleging that Lystable is infringing its federally registered trademark.
According to London-based Lyst’s complaint, it began using its “Lyst” trademark in 2010 in connection with its “software platform that digitally hosts, promotes and markets millions of products that are aggregated from Lyst’s business partners, who include some of the world’s best known fashion brands and retailers, such as Paul Smith, Ralph Lauren, Barneys New York, J. Crew, Burberry, Harrods, Valentino, Alexander Wang, Selfridges, ASOS, and Farfetch.” In short: Lyst partners with well-known brands and introduces a personal shopping element to online shopping.
In particular, Lyst alleges that it maintains federal trademark rights in the classes of goods and services that extend to: “computer application software,” “operating online marketplaces for sellers and buyers of goods,” and “hosting of digital content on the Internet.”
Enter: Lystable. The San Francisco-based technology company, which launched roughly six months ago, “digitally hosts data and provides a software platform to allow its customers to organize and interact with freelancers and external vendors,” per Lyst’s complaint, and only “began using the ‘Lystable’ name in the United States less than three months ago.”
While not necessarily in the fashion sphere, Lyst claims that Lystable is infringing its inherently distinctive mark as Lystable’s mark “is substantially identical to the [Lyst trademark] from a visual, aural and conceptual perspective. Further, [Lystable] provides services that are substantially identical to, and in direct competition with, the services provided by Lyst.”
In addition to confusion that may be caused by the obvious name-specific similarities, Lyst alleges that “this confusion is compounded by the fact that both businesses are data-driven, technology companies whose software platforms share similar functionality.” Moreover, Lyst states that confusion stems from the fact that both companies “target the same pool of investors and funds looking to invest in fast-growing technology companies, compete to hire software engineering talent in the same recruitment sphere, and seek to be nominated for and win awards from the same technology start-up industry bodies.”
Consumer Confusion: A Core Tennant
As the legally minded amongst us will know, the critical inquiry in a trademark infringement matter is whether the defendant's use of the trademark at issue (to identify goods or services) causes a likelihood of confusion among consumers. In other words, will consumers think that the defendant’s goods/services are affiliated with, connected to or association with the plaintiff, or that the plaintiff has sponsored or approved of the defendant's goods?
Given that trademark law protects a trademark owner's exclusive right to use a trademark when use of the mark by another would be likely to cause consumer confusion as to the source or origin of goods, a finding of a likelihood of confusion will enable a plaintiff to prevail in his case (assuming that he establishes that he has a valid mark entitled to protection; and that the defendant has used the same or a similar mark in commerce in connection with the sale or advertising of goods or services without his consent).
In asserting that consumer confusion “is all but assured” in the case at hand, Lyst stated that “actual confusion has already begun. For instance, Lyst’s head of talent recently received a message from a recruiter who believed, mistakenly, that Lystable was a spinoff of Lyst. Similarly, one of the investors in Lyst had a conversation with another investor who confused Lystable with Lyst.”
As a result, Lyst has asked to the court to preliminarily and permanently enjoin (aka: prevent) Lystable from using the “Lystable” mark and/or “injuring Lyst’s business reputation and the goodwill associated with its Lyst trademark and from otherwise unfairly competing, directly or indirectly, with Lyst, its affiliates, or subsidiaries.” Moreover, Lyst is seeking a yet-to-be specified amount of monetary damages in connection with Lystable’s alleged infringement of its trademark.
Essentially, Lyst wants to the court to order Lystable to change its name and to pay Lyst damages for using the name in the first place. Stay tuned!
* This case is LYST LTD. V. LYSTABLE INC., 1:16-CV-09498 (SDNY).