New York Fashion Week has been the subject of an intense battle since early last year. The Council of Fashion Designers of America (CFDA), the official party tasked with organizing and scheduling NYFW, waged a legal fight to overturn a third party’s exclusive right to use the name in January 2014. The not-for-profit trade association, which boasts a roster of over 450 American fashion and accessory designers, filed suit after Fashion Week, Inc., a company that sells tickets to New York Fashion Week events, received a federal trademark registration in connection with the name of the bi-annual industry event.
You may recall that the CFDA filed trademark cancellation proceedings with the Trademark Trial and Appeal Board (TTAB) last year, arguing that the TTAB should cancel Fashion Week, Inc.’s existing trademark. The CFDA’s basis for seeking to cancel Fashion Week, Inc.'s trademark is this: The trade organization and "its predecessors-in-interest" have established rights in and to the mark NEW YORK FASHION WEEK through their continuous use of the mark in commerce for decades, "at least since 1994, which is well prior to October 4, 2013, the first use in commerce date claimed by [Fashion Week, Inc.] for the NEW YORK FASHION WEEK Registration."
As we told you previously, these dates matter because the U.S. trademark system runs on a first-to-use basis. This means that it is not registration of a mark with the USPTO, but actual use of a mark, that creates rights and priority over others using the same or similar marks. Thus, the rule is that ownership of a mark goes to the party that is the first-to-use the mark, not the first-to-file a registration for the mark. In this case, the CFDA contends that it was the first to use the mark.
However, it appears that the CFDA prematurely gave up on the lawsuit it filed in order to claim rights in the New York Fashion Week name. After failing to take “measures to effectively prosecute its case since its filing of the Petition to Cancellation,” Fashion Week, Inc. filed a motion for judgment, asking the TTAB to dismiss the case with prejudice. (Note: the “with prejudice” part means that when the dismissal of a case is granted by the court it is final, and the parties cannot later re-initiate legal proceedings on the matter. This is in contrast to dismissal without prejudice).
Well, as of earlier this month, the TTAB granted Fashion Week, Inc.’s motion, and dismissed the case. As for whether this suggests that the CFDA will rely on “NYFW” to refer to the week-long fashion shows going forward, that may not be an option either, as Fashion Week, Inc. already has a federally registered trademark for NYFW in connection with “Entertainment in the nature of fashion shows; Organization of fashion shows for entertainment purposes.” As for the newer “New York Fashion Week The Shows” and "NYFW The Shows" names, it turns out the CFDA likely won’t have much luck there either, as Fashion Week, Inc. has filed trademark applications for these marks, as well. Ouch.
So, what does this mean for the CFDA and NYFW (and New York Fashion Week and New York Fashion Week The Shows, etc.) in general? Well, as long as Fashion Week, Inc. does not file trademark infringement lawsuits against the CFDA for using the various NYFW terminology, it seems as though its trademark registrations will not be a problem. However, because it is the trademark owner’s duty to police to use of its trademark by other parties (such as the CFDA), there is a very real possibility that there will be lawsuits coming the CFDA’s way in the near future. Stay tuned …