GiGi New York, a "high-end leather handbags, clutches, wallets & accessories" company, has threatened to sue Tommy Hilfiger on the heels of the brand’s New York Fashion Week carnival extravangza, which featured its new collaboration with model Gigi Hadid. The New York-based handbag brand sent Hilfiger a cease and desist letter in connection with the newly-released TOMMYXGIGI line, which consists of garments, footwear, swimwear, jewelry, fragrances, and handbags, demanding that Hilfiger cease all use of the brand's “GiGi” trademark on handbags in its Fall/Winter 2016 collection and any future collections.
According to a statement from GiGi (the brand, not the model): “Recognizing the obvious potential for consumer confusion, GiGi New York requested that Tommy Hilfiger cease and desist its misuse and work in partnership to prevent consumer confusion based on the misuse … GiGi has common law priority rights since 2010 and owns federal trademarks for its ‘GIGI’ family of marks. Similar trademarks are held throughout Europe, and GiGi is positioned to defend them on both continents."
GiGi New York further alleges that its mark “utilizes a unique upper and lower case treatment that Tommy Hilfiger has copied, causing additional consumer confusion, despite this typographical treatment having no history of use by its spokesperson, Gigi Hadid.”
According to our research, GiGi New York has maintained a single federal trademark registration for "GiGi New York" in the class of goods that covers "Key cases; Leather and imitation leather bags; Leather bags and wallets; Leather bags, suitcases and wallets; Leather cases" since January 2012. And coincidentally or not, just days prior to Hilfiger's runway show this weekend (and after Hilfiger announced it collaboration with Gigi Hadid), GiGi New York filed a trademark application for "GiGi" in connection with the same class of goods. It's application is pending with the U.S. Patent and Trademark Office (USPTO) and is subject to potential rejection by the USPTO in the coming months and very well may be opposed by Hilfiger when it gets to that stage.
Tommy Hilfiger’s counsel has reportedly notified GiGi New York that it does not intend to cease its use of the Gigi mark in connection with its Fall/Winter 2016 collection, which went on sale directly after the runway show this weekend. Moreover, Hilfiger’s counsel noted that the brand "is not concerned about the consumer confusion engendered by such alleged misuse." As such, it seems that very well may be a lawsuit in the making here. Stay tuned …