UPDATED: CFDA, WME-IMG Sued for Using New York Fashion Week Trademark

THE FASHION LAW EXCLUSIVE - The Council of Fashion Designers of America (“CFDA”) and WME-IMG have been slapped with a lawsuit over its use of the “New York Fashion Week” trademark. As the owner of the Fashion Calendar, the CFDA is the official party tasked with organizing and scheduling NYFW. However, following a trademark ruling this spring, it does not have legal rights to the name, and the party that does, Fashion Week, Inc., a company that describes itself as "producing live fashion shows that are predominantly focused on the consumer market for entertainment proposes only," is suing the CFDA and NYFW producer, WME-IMG, for trademark infringement.

The lawsuit at hand, which was filed in the Southern District of New York, a federal court in Manhattan last week, asserts that the CFDA and WME-IMG's use of the NYFW name amounts to trademark infringement (the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services). The suit comes on the heels of a lengthy legal fight waged by the CFDA to overturn Fashion Week Inc.’s exclusive right to use the NYFW name.

After New York-based Fashion Week, Inc. beat the CFDA to filing for rights in the New York Fashion Week trademark, the CFDA has been fighting to invalidate the mark ever since. The CFDA, a not-for-profit trade association, which boasts a roster of over 450 American fashion and accessory designers, filed an action with the Trademark Trial and Appeal Board (“TTAB”) in January 2014 after Fashion Week, Inc., received a federal trademark registration in connection with the name of the bi-annual industry event. In connection with that matter, the CFDA alleged that it 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."

Yet, the CFDA was unsuccessful in having Fashion Week Inc.’s “New York Fashion Week” trademark overturned and now, Fashion Week Inc. is suing for trademark infringement.

This is likely just the beginning of yet another battle between the parties, which very well may subsist until either the CFDA and WME-IMG are able to show that they are the rightful owners of the NYFW trademark or until they change the name of the bi-annual event.

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.

Fashion Week Inc.'s counsel, Robert Greener, told TFL in an email: "Our comment is that the allegations in our complaint filed in the Southern District Court regarding the trademark infringement and misappropriation of our marks by Defendants, sets forth our position in the case."

The case is FASHION WEEK INC. v. COUNCIL OF FASHION DESIGNERS OF AMERICA, INC. ET AL, 1:16-CV-05079.