It appears that a trademark battle is brewing between Thrasher Magazine and H&M. The San Francisco-based skater magazine - which was launched in January 1981 by Kevin Thatcher, Eric Swenson, and Fausto Vitello - took to its Instagram account to share a photo of a sweatshirt from H&M’s in-house line, Divided, bearing the word, “Trippin,” in a font that looks just a bit too similar to its own Thrasher logo.
As indicated by Thrasher's Instagram post - which includes the caption, “Just got a letter back from @hm's lawyers. Here's an excerpt from their response" - the skate mag sent a cease and desist letter to the Swedish fast fashion giant, citing trademark infringement. And in its response, H&M has denied any wrongdoing.
According to H&M’s response, it is not using the Thrasher flame logo in a way that infringes Thrasher’s trademark, but instead, it is using the font merely as “an ornamental or a decorative feature.”
Moreover, H&M’s counsel asserts that not only is it not using the font in such a way, even if it is, consumers are not likely to be confused (the central inquiry in a trademark infringement case) into thinking that its sweatshirt is connected to or affiliated with Thrasher Magazine. Still yet, H&M's letter claims, "The words 'trippin' and 'Thrasher' and/or 'Thrasher Magazine' do not sound alike not look alike. While both words start with the letter 'T' that is not enough to succeed on a likelihood of confusion claim.”
What H&M seemingly misses here is that the success of the "likelihood of confusion" claim it refers to is not up for it to decide. If Thrasher - which operates as a family-run company with a closely held chain of distribution - decides to file a trademark infringement lawsuit, it will be up to a jury to decide if consumers are likely to think that the defendant’s use (H&M here, hypothetically) of the trademark leads consumers to believe that the plaintiff (Thrasher here, hypothetically) has in some way endorsed defendant’s goods/services or is connected or affiliated with the defendant and its goods/services. That is the legal definition of confusion.
It is also worth noting that the test to determine whether or not there is a likelihood of confusion consists of a number of factors, only one of which is the similarity of the two marks.
Fashion has recently taken a liking to Thrasher merch. As Vogue in an article devoted to the tees in January 2016, "Officially paraphernalia from Thrasher magazine, the tee has become a rising staple in the model-off-duty wardrobe of any catwalker worth her Instagram following." Paris-based it brand Vetements' adoption of the logo (which was almost certainly legal, as the brand has a history of licensing the logos of others) has certainly upped the ante, as well.
With such increased visibility on the fashion front, it is not surprising that H&M decided to offer a lookalike version of the tee. And this is not the first time that Thrasher has dealt with fast fashion copies. Forever 21 took a recently popularized by Vetements-style rain coat and put the word “Happiness” on the back in the same flame-style font.
While Thrasher only filed a trademark application for its “Thrasher” logo – which according to its application “consists of the word THRASHER in stylized font; the word appears in an arch with flames coming out of the tops of the letters. The lettering is yellow outlined in orange and red; the flames change from yellow, to orange, to red.” – on February 1, the brand likely has common law rights in the mark, which it has been using since 1991.
The strength of its trademark will, of course, depend on how well known the mark is. According to Racked, "In 1981, when Thrasher printed its first issue, it was one of four mass circulation magazines competing for skate kids’ pocket money. Before even opening an issue of Thrasher, though, its design conveyed more attitude than its competitors."
Hypebeast echoed this notion in an article of its own, writing: "Thrasher is basically skateboarding’s Bible: editorially speaking, its voice has always been by skaters for skaters, caring little for the acceptance and understanding of outsiders."
With these descriptions in mind, and given that the magazine has been using the mark continuously - and exclusively - since 1991, it does not seem like a stretch to assume the mark is pretty strong and that absent a "parody" argument from H&M, it very well could prevail in an infringement suit against H&M. More to come ...