Swatch to Michael Kors: That's Our Trademark

In a new trademark battle with Michael Kors, Swatch is laying claim to its name in opposition of Kors’ new “Access” Smartwatch. In a recently-filed matter with the U.S. Trademark Trial and Appeals Board (“TTAB”) – a body within the U.S. Patent and Trademark Office (“USPTO”) responsible for hearing and deciding certain kinds of trademark cases, including oppositions and appeals – the Switzerland-based watch company is attempting to block Michael Kors from federally registering its “MICHAEL KORS ACCESS” trademark.

Swatch’s move to stop Michael Kors from federally registering its “MICHAEL KORS ACCESS” trademark comes on the heels of Kors filing an application with the USPTO to register the ACCESS trademark in classes 9 and 14, which extend to wearable tech designs (and all parts that comprise the devices) and “watches and parts thereof.”

As you may know, in the United States, before a trademark may be registered with the USPTO (and therefore enforced on a nationwide basis by the trademark holder, as opposed to simply a state by state basis for non-federally registered marks), a number of requirements must be satisfied. The mark must be published in the Official Gazette – a weekly publication of the USPTO – to give others a chance to oppose it. After said mark is published, any party who believes it may be damaged by registration of the mark has thirty days from the publication date to file either an opposition to registration or request to extend the time to oppose. The application will then enter the next stage of the registration process if no opposition is filed or the opposition filed is unsuccessful.

According to Swatch’s Notice of Opposition, which it filed with the TTAB this past week, New York-based Michael Kors’ Access trademark is “confusingly similar to [Swatch’s own] SWATCH ACCESS trademark and is likely, when applied to the goods of [Kors], to cause confusion, or to cause mistake or to deceive.” (Confusion is, after all, the core inquiry in determining whether a mark should be registered with the USPTO).

Swatch – which describes itself as an “innovative company which has associated its marks with a range of goods” – alleges that “consumers encountering [Kors’] mark and goods are likely to believe that such goods originate from, or are authorized or sponsored by [Swatch], in view of the similarities between [Swatch’s] mark and goods and [Kors’] mark and goods.” Moreover, the company claims that it has “acquired considerable and valuable goodwill and wide-scale recognition for its marks.”

Swatch goes on to state that it has “used its SWATCH mark on watches for over thirty (30) years, and has used its mark on goods incorporating enhanced functionalities since at least as early as 1996.”  This includes numerous federally registered trademarks that apply to an array of classes of goods/services.