New York Fashion Week is swiftly approaching, and coincidentally, there has also been an update in the battle for trademark rights for the name. As you may recall, in July 2014, a federal trademark registration for “New York Fashion Week” was awarded to Fashion Week, Inc., a Florida-based company, which is in the business of selling tickets for various fashion-related events, including NYFW. Turns out, Fashion Week, Inc. beat NYC-based trade association Council of Fashion Designers of America (CFDA) to filing for rights in the trademark, and the CFDA has been fighting to invalidate the mark ever since.
The timeline is as follows: Fashion Week, Inc. filed to register the “NEW YORK FASHION WEEK” trademark with the U.S. Patent and Trademark Office (USPTO) in November 2013 in connection with “on-line entertainment ticket agency services.” Several months later, in March 2014, the CFDA filed to register the same trademark in connection with the “organization of fashion shows for commercial purposes, namely, scheduling and administration of fashion shows during two biannual periods.”
Fashion Week, Inc.’s “NEW YORK FASHION WEEK” trademark was registered in July 2014 on the Supplemental Register. The company has also been awarded a registration for“NYFW” on the Principal Register, and in October 2015, beat the CFDA to filing two additional trademark applications for “NEW YORK FASHION WEEK THE RUNWAY SHOWS” and “NYFW THE RUNWAY SHOWS.”
Not surprisingly, given this timeline, he CFDA’s application for “NEW YORK FASHION WEEK,” hit a roadblock in January 2015, when the USPTO held that the CFDA’s mark was too similar to Fashion Week, Inc.’s “NEW YORK FASHION WEEK” mark.
As a result, the CFDA initiated proceedings to have Fashion Week, Inc.’s registration invalidated. According to the petition that the CFDA filed early last year, it is urging the USPTO to cancel Fashion Week, Inc.'s existing mark, alleging that it "believes that it has been and continues to be damaged [as a result of Fashion Week, Inc.'s mark], including as a result of a likelihood of dilution." Moreover, the CFDA alleges 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."
Why do these dates actually matter? Well, 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 in commerce, 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, and thus, is the proper rights owner.
With all of this in mind, the battle does not appear to be going terribly well, at least according to Fashion Week, Inc.’s most recent filing. Last week, Fashion Week, Inc. filed a petition with the Trademark Trial and Appeal Board to have the trademark cancellation proceeding dismissed, stating that the CFDA “has taken no measures to effectively prosecute its case since its filing of the Petition to Cancellation.” The motion goes on to assert: “Despite conversations with opposing counsel, Petitioner [that’s the CFDA] has not conducted discovery, its testimony period has passed, and the Petitioner has not taken any testimony or offered any evidence that the Board may rely on in making a decision. Simply, the record is devoid of any evidence in support of its case, and thus, Petitioner cannot prevail as a matter of law.”
If the Trademark Trial and Appeal Board dismisses the cancellation proceedings, the CFDA will be even one step closer to losing the New York Fashion Week trademark. More to come …