Tom Ford is being sued over the name of some pricey sweaters. The estate of Steve McQueen is far from flattered that $1,600-plus cardigans from Tom Ford bear the “McQueen” name and has slapped the fashion brand with a trademark infringement, right of publicity violation, and unfair competition lawsuit, as a result, seeking to immediately and permanently prevent any further usage of the late actor’s name and an array of monetary damages, including all of the profits that Tom Ford made from its sale of the sweaters, plus statutory damages of at least $2 million.
According to the estate’s complaint, which was filed in a California state court on Friday, and first reported by the Hollywood Reporter, "Certain sartorial items [have], in fact, become synonymous with McQueen.” One such garment, according to the complaint: “a wool cardigan sweater with a shawl collar,” which the late McQueen – who was coined Hollywood’s “King of Cool” – had a strong hand in helping to “make cool.”
By selling the sweater with the McQueen name attached to it, Tom Ford is likely to cause confusion amongst consumers as to whether the McQueen estate is connected with or has authorized such usage (the core of a trademark infringement claim), according to the estate. More than that, it is allegedly trading on the well-established appeal of the actor’s name in order to sell clothing, thereby, running afoul of his right of publicity.
Unlike some other states in the U.S., where an individual’s right of publicity (i.e., his right to control the commercial uses of his name, image, likeness, etc.) is extinguished when he dies, in accordance with California state law, the right of publicity lives on. Practically speaking, this means that an individual’s estate may prohibit unauthorized uses of the deceased individual’s name or likeness for commercial purposes for a total of 70 years, which is precisely what McQueen’s estate is doing here.
While Tom Ford does not use the full “Steve McQueen” name, given that many of the retailers offering up the sweater, such as Mr. Porter, Neiman Marcus, ModeSens, and Selfridges, do – listing the garment as the “Steve McQueen Cardigan” – the estate’s right of publicity claim may not be such a stretch.
What stands out as the uphill battle here is the trademark infringement claim because in order to make a successful infringement claim, the plaintiff (the McQueen estate) will have to show that the defendant (Tom Ford) is actually using the mark in a trademark capacity. In plain English that means the use of the protected word or words, “McQueen” (or “Steve McQueen”) in this case must be used or intended to be used to identify and distinguish the goods of one seller or provider from those of others, and to indicate the source of the goods, and not merely in a descriptive way.
In other words, the McQueen estate will have to show that Tom Ford is using the McQueen name on the sweaters to distinguish them from those of competitors. To this, Tom Ford’s counsel will almost certainly respond by arguing that the brand is doing no such thing, and instead, is using the McQueen name to describe the product, one that by the McQueen estate’s own assertion the late actor helped to make famous.
Will Ford’s counsel prevail in such an argument? That is a relatively good chance, as it generally understood that individual product/style names typically do not function as trademarks (and thus, do not give rise to infringement).
While there are some exceptions, of course, in which style names gain trademark rights due to significant advertising of the name (as associated with the brand) and longstanding consistent use in commerce, such as the Louis Vuitton “Speedy” and “Neverfull” or … the Hermès “Birkin,” that is probably not the case here, meaning McQueen’s estate will almost certainly have an easier time with its right of publicity claim.