Image: ALO

With Gigi Hadid, Kendall Jenner, Hailey Bieber, and Taylor Swift being spotted in its yoga pants, ALO has found fans amongst some of the most heavily-watched young figures in the world. The trendy, Los Angeles-based yogawear brand is finding itself in the spotlight even further thanks to a new lawsuit, one that enters on the 12-year old company’s use of the word “Lush” on certain products. Fellow Los Angeles-based company Pinkette, which does business as LUSH, is alleging that such use runs afoul of the trademark rights in the word and is causing confusion amongst consumers.

According to the complaint that Pinkette filed earlier this month in a federal court in Los Angeles, it has been using the word LUSH in connection with a “high-quality, contemporary and fashion-forward” womenswear brand since 2003, boasting stockists, such as “Nordstrom [Rack], Dillard’s, and TJ Maxx and many high-end boutiques nationwide.” Fast forward to March 2019 and Pinkette says that it “became aware that a company called ALO was using [the word] LUSH in connection with its own women’s clothing.”

“ALO’s unauthorized and intentional use of the LUSH [trademark] has and continues to cause confusion in the marketplace, mislead the consuming public, and injure Pinkette by causing consumers to incorrectly believe that ALO’s LUSH branded products are associated with Pinkette’s LUSH Label or otherwise authorized by Pinkette,” the company claims, and thus, asserts that it sent ALO a cease and desist letter in March, demanding that it immediately stop using the word “Lush” in connection with its wares.

The buzzy yoga brand’s “conduct began long after Pinkette’s adoption and use of its LUSH Mark and after Pinkette’s LUSH Label became well-known to the purchasing public,” Pinkette asserts, and despite its attempts to police such allegedly unauthorized use of its registered Lush mark, “ALO has thus far been unwilling to discontinue its infringing activities.”

With the foregoing in mind, Pinkette sets forth claims of federal and common law trademark infringement, federal and common law unfair competition, and California unfair business practices, and has asked the court to award it preliminary and permanent injunctions, and to require that ALO recall all “Lush” branded products and marketing materials so they can be destroyed. Still yet, Pinkette is seeking monetary damages to the tune of the actual damages it has suffered as a result of ALO’s allegedly infringing behavior, a disgorgement of ALO’s “wrongfully obtained” profits, and punitive damages.

While Pinkette has, in fact, enjoyed federal trademark protection for the word “Lush” for use on “clothing, namely, tops, bottoms and dresses” and competing or related goods, as well, since 2010, the case becomes less of an open-and-shut trademark infringement matter when you consider the exact manner in which ALO is using the allegedly infringing “Lush” mark.

Pinkette points to three of ALO’s yoga garments, including its “Lush Bra,” “ALOSoft Lush Bra,” and “High-Waist Lush Short,” as evidence of such alleged infringement. What ALO’s counsel will almost certainly – and probably persuasively – argue in response to Pinkette’s suit that it is not running afoul of the law at all because it is not using the “Lush” name in a source-indicating (i.e., trademark) manner.

Such an argument will hinge on the fact that trademark law only provides protection for words, symbols, product shapes, logos, etc. that identify the source of goods or services; it does not protect uses – such as descriptive or decorative ones – that do not have source-identifying functions. For instance, as highly-cited treatise McCarthy on Trademarks and Unfair Competition states, “[W]ords … used as designations of a particular style … [are] not valid trademarks if they do not serve the function of identifying and distinguishing the goods … of [one] seller from those of others.”

This has been understood to extend to product style names. As lawyer Jessica Elliott Cardon wrote in an article for the International Trademark Association, “Fashion product style names typically do not function as trademarks, as they do not operate to identify to the consumer the source or origin of the product.” There are certainly some exceptions; Cardon points to Tory Burch’s widely-used “Reva” product style name, which, since 2006, has referred to the brand’s hot-selling ballet flats.

But that is a relatively high bar, since, as Teri Agins wrote for the Wall Street Journal in 2014, these are not just any ballet flats. Burch’s $195 Revas were bona fide “it” products in the mis-2000s, with “more than 250,000 pairs [selling within] two years,” prompting the company to sell even more when it “rolled out dozens of variations in suede, patent leather, leopard and metallic leathers,” all of which bore the “Reva” name.

Due to the sheer popularity of the Reva flats on a large scale and the uniform use of the “Reva” name across Burch’s heavily-sold line of flats, the style name gained trademark significance (i.e., it served to identify the source of the products), but that is, of course, not the norm for a style name, and in fact, appears to differ quite a bit from ALO’s use of “Lush.”

For one thing, ALO’s use of the word “Lush” spans a number of different types of garments – from bras to shorts, and is only used, as of now, on three styles, which suggests that such use of more analogous to a style name than a source-identifying term. More than that, the company does not only use the word “Lush” across certain, fixed sets of products; it also uses a variety of other style names – such as “Luxe,” “Lotus,” “Lounge,” “Mode,” and “Off-Duty” – on its bras, tops, shorts, and leggings, thereby, lending credence to the argument that its use of “Lush” is not meant to enable consumers to link the products exclusively to the ALO brand.

With this in mind, ALO likely has a strong argument that its use of the word “Lush” is not meant to – and does not – act as a trademark, and thus, does not run afoul of the law.

*The case is Pinkette Clothing, Inc. v. ALO, LLC, 2:19-cv-06897 (C.D. Cal.).