Just over two years after announcing the impending launch of Yeezy Gap, a 10-year deal between the American mall brand and musician-slash-fashion figure, the Gap x Kanye West collaboration is starting to take shape. The heavily-hyped pairing has gotten off to something of a slow start, as “in its first 18 months,” Yeezy Gap “yielded just two products” – a puffy coat and a hoodie – “both sold only online,” the New York Times reported this week. Fast forward to May 2022, and French fashion brand Balenciaga entered into the equation and “a full Yeezy Gap collection was finally released,” a portion of which hit stores across the U.S. – and the web via the Yeezy Gap and Balenciaga sites, as well as via third party retail platforms like Farfetch and MyTheresa – this past weekend, “with more promised later in the year.”
Since the first announcement of Yeezy Gap back in June 2020, the venture has undergone “product development, testing and learning” from an apparel and textile perspective; seen changes in high-level management for the project (Gap installed former Vampire’s Wife CEO Leonardo Lawson to a strategy role in 2021; he was promoted to head of Yeezy Gap in March), as well as design (original design director Mowalola Ogunlesi left after the end of her one-year contract, and the endeavor now boasts a 20-person “innovation studio”); and welcomed the involvement of Balenciaga creative director Demna Gvasalia, who says that he stepped in to help “give [Kanye] the starting point” for the project. (Gvasalia told the Times that the Balenciaga element of the partnership “is now over.”)
All the while, behind the scenes of the protracted timeline of the Yeezy Gap’s largest launch to date, the collaborative endeavor has also been building out its branding – and not without a setback or two along the way.
The mashup of Gap’s signature navy blue hue with Yeezy’s “YZY” mark was first teased in 2020 when the Yeezy Gap was announced, and formalized a year later when West’s Mascotte Holdings, Inc. and GAP (Apparel) LLC filed three joint applications for registration with the U.S. Patent and Trademark Office (“USPTO”) for the blue-hued logo for use on clothing; “handbags, backpacks, all purposes carrying bags, [and] luggage,” among other similar goods; and “retail and online store services in the field of clothing, footwear, headwear, accessories, bags.” Two months later, they filed an application for the same mark – for use in connection with “retail and online store services” – with the European Union Intellectual Property Office (“EUIPO”).
The parties’ logo – which can be found on the individual garments in the latest launch (and the puffer and hoodie that dropped last year) and on the Yeezy Gap website – was registered by the EUIPO on July 13. However, potential registrations for the mark with the USPTO have been a bit less straightforward, and in fact, the applications were suspended by the U.S. trademark body in June due to a conflict with another party’s previously-filed application for registration for a stylized Y.Z.Y. logo for use on “fragrances and hair care preparations.”
As TFL previously reported, Mascotte and Gap’s jointly filed the U.S. applications for registration for “the letters YZY in white inside of a blue square with rounded edges” were met with pushback for the USPTO, which pointed to the application that Miami-based perfume and beauty supply wholesaler Y.Z.Y., Inc. filed in June 2018. “If the mark in [Y.Z.Y., Inc.’s] application registers, the USPTO may refuse registration of [Mascotte and Gap’s] mark … because of a likelihood of confusion with the registered mark,” USPTO examining attorney Rebecca Caysido stated in Office actions in December 2021 in response to Mascotte and Gap’s applications.
Caysido reiterated this point in a second round of letters to Mascotte and Gap on June 30, in which she suspended the applications until Y.Z.Y., Inc.’s mark is either registered or the company abandons its application.
Caysido also pointed to the potential for a likelihood of confusion among consumers between the Yeezy Gap logo and an existing registration for a YZY word mark held by Mascotte. This refusal could be overcome, she stated in the letter, by way of “a written statement explaining the nature of the legal relationship between” Mascotte and Gap, along with “a detailed written explanation and documentary evidence showing the parties’ ‘unity of control’ over the nature and quality of the goods and/or services in connection with which the trademarks … are used” given that “neither party owns all or substantially all of the other party.” (This answers a question I posed last year about whether companies like Yeezy and Gap, which do not share a parent company, will face additional issues when it comes to their co-branded assets given that they are two different entities, and thus, two separate sources even if the collaborative wears arguably come from a new, single source.)
The story over Y.Z.Y., Inc.’s application – and in turn, Mascotte and Gap’s own YZY filings – does not end there, though, as there is a separate battle underway between Y.Z.Y., Inc. and Mascotte. As it turns out, on the heels of Y.Z.Y., Inc. landing in the receiving end of Office actions of its own, in which the USPTO asserted that its stylized Y.Z.Y. mark is confusingly similar to a “YZY” word mark that was registered to Mascotte in 2017 for use on footwear (no. 5227726). Faced with such pushback, Y.Z.Y., Inc. initiated a cancellation proceeding before the USPTO’s Trademark Trial and Appeal Board in August 2019 in an attempt to have Mascotte’s YZY registration invalidation on the basis that its use of Y.Z.Y. dates back to “at least as early as August 2011,” and thus, predates Kanye’s use of the mark.
That back-and-forth before the Trademark Trial and Appeal Board has been on hold since 2020 in light of “pending settlement negotiations” between the parties.
With the foregoing in mind, the outcome of Gap and Mascotte’s trademark applications23 may now hinge, to some extent at least, on the registrability of Y.Z.Y., Inc.’s mark. Any outcome on this front is, of course, distinct from the rights that Mascotte and Gap have already amassed in the YZY logo and “Yeezy Gap” word mark in the U.S. simply by using – and widely advertising – those marks (and the Yeezy Gap brand more broadly) in connection with garments and retail services. And with Gap’s ambitions of turning the Yeezy Gap brand into a $1 billion-plus venture (and a much-needed one, as the company is in the midst of financial woes), it seems unlikely that it will allow a relatively minor trademark scuffle to stand in the way.