This is not quite the march of the penguins – it is more like the battle. Perry Ellis International (“PEI”) is waging war against Thom Browne for its use of a “confusingly similar” penguin logo. According PEI’s suit, which was filed on Tuesday in an Illinois federal court, New York-based design darling Thom Browne is on the hook for trademark infringement for making prominent use of designs that allegedly look a while lot like the trademarks of its Original Penguin brand.
According to PEI, its Original Penguin brand – “a fashion mainstay for more than 60 years, [which] came to fame in the 1950’s, long before Ralph Lauren and similar producers of logo fashion apparel” – first used a penguin design “on or in connection with apparel at least as early as 1956.” The company asserts that it has used the logo contentiously ever since, and acquired an array of federal trademark registrations for it.
Given such use – paired with endorsements from everyone from Bing Crosby, Bob Hope, Arnold Palmer to Brad Pitt and Jake Gyllenhaal – consumers have come to associate the penguin design with the Original Penguin brand, according to PEI. With that in mind, the brand is allegedly being damaged by Thom Browne’s recent adoption of a penguin logo.
PEI claims in its suit, “In recent months, [Thom Browne] has launched a new fashion line of apparel and accessories with various items featuring penguins.” It further states, “By affixing a penguin design to numerous apparel and accessory items, [Thom Browne] is creating a clear association in the minds of consumers between [its brand] and the penguin trademark.”
Thom Browne has, in fact, taken to using penguins in connection with its brand and such usage has not been lost on the fashion press. As noted by the Washington Post’s Robin Givhan on the heels of Thom Browne’s Fall/Winter 2017 womenswear show, “Serious blazers were embroidered with tiny penguins. Handbags were constructed in the shape of penguins and dogs.”
Vogue’s Maya Singer wrote, “The natty jackets in their idiosyncratic fabrications, the fur-trimmed outerwear, the cropped trousers … all had broad appeal. The show’s penguin theme was a tougher sell. But it nevertheless felt personal to Browne, in a good way. A dapper little bird indeed, the penguin is surely Browne’s spirit animal. In many ways this season, Browne seemed to be saying, ‘This is me.’”
Shortly after the show, an array of Thom Browne garments and accessories bearing a small penguin design hit the market. So, PEI alleges that in July it “sent a letter expressly notifying [Thom Browne] that PEI believed [its] continued sales of penguin apparel and accessories infringe and dilute the Penguin marks.”
PEI claims that Thom Browne was undeterred. “Despite PEI’s subsequent demands that [Thom Browne] immediately stop selling apparel and accessories featuring the Penguin marks, [Thom Browne] continues to willfully infringe and dilute the Penguin marks.”
Such “continued use of the Penguin marks is willful and intentional and is intended to trade on and/or diminish the reputation and goodwill of PEI,” the brand argues in its complaint. Moreover, Thom Browne’s “use of the Penguin marks is likely to mislead, deceive and confuse consumers,” per PEI, who “will mistakenly believe that [Thom Browne] is connected to, associated with or in some way affiliated with PEI, when in fact no such connection, association or affiliation exists.”
PEI has asked the court to immediately and permanently prevent Thom Browne from using the “confusingly similar” penguin design on its products and is seeking a jury trial in order to determine the value of the damage that such use has allegedly caused its brand.
Before we get ahead of ourselves and assume that PEI is, in fact, entitled to damages from Thom Browne for trademark infringement, it is important to remember the central inquiry in a trademark infringement matter. The key question is: Are consumers likely to be confused by Thom Browne's allegedly infringing use of the penguin design? In other words, will the average consumer believe that Thom Browne's penguin printed garments - or penguin-shaped bag - are affiliated with the Original Penguin brand?
This might have been an easy win in the United Kingdom or the European Union (where fashion companies, such as Jack Willis, have successfully sued over lookalike animal logos). In the U.S., however, I am skeptical - if for no reason other than that the specific penguins designs being used by Original Penguin and Thom Browne do not look anything alike. The similarity here seems to center exclusively on the fact that both Original Penguin and Thom Browne are using penguin designs on garments and accessories, but that - unfortunately for PEI - is more likely an idea that is not protectable by law than the basis for a merited claim of trademark infringement.
Harley Lewin, counsel for Thom Browne, told WWD that the brand is “surprised and dismayed” by the lawsuit. “Thom Browne has not and has no intention of using a penguin as a trademark,” Lewin added. “He uses it as a design element and he’s very well known for switching these things. He’s used whales, dogs, turtles and so forth and the particular penguin design he’s used is not the same.”
Lewin compared the Original Penguin logo to Ralph Lauren’s Polo logo featuring a polo player on a horse, saying just because the brand has that trademark, “it does not own the right to all horses.” Browne is "inclined to view this as unfortunate, but not something that would rise to full blown litigation or trial. Obviously we’ve done our homework and if Perry Ellis wants a fight, we’ll defend ourselves.”
* The case is PEI Licensing Inc., v. Thom Browne, Inc., 1:17-cv-06589 (N.D. Ill.).