Diptyque may have settled the advertising-centric lawsuit that it filed against Italic last year, but it appears to have paved the way for a similar suit, which has since been waged by buzzy activewear company ALO. In the complaint that it filed against Italic in a California federal court on Wednesday, the Beverly Hills-based athleisure company claims that Italic has engaged in a pattern of marketing that “consists of false and misleading statements, depictions and purported comparisons involving ALO products,” and by running such a campaign, which has appeared on billboards and buses, it is violating trademark and false advertising laws.
According to the newly-filed complaint, ALO asserts that it has “marketed and sold products under the ‘alo’ brand since 2006 and, due to continuous, extensive advertising, promotion and sales,” it has developed “considerable goodwill and reputation throughout the United States and abroad.” At the same time, ALO claims that it has “sold millions of dollars’ worth of products under the ALO trademarks and has expended a great deal of time and effort and resources in the promotion and advertisement of its products under the ALO name,” for which it has held the exclusive right to use since it first adopted the marks more than 15 years ago.
Against this background, ALO alleges that Italic – a retailer that prides itself on eliminating traditional retail markups and offering up products for “50 to 80% less” than name brands and with “the exact same quality” – is making use of an advertising strategy that “intentionally associate[s] Italic with ALO to consumers and trade[s] on ALO’s goodwill” in the process. Specifically, ALO points to two Italic ad campaigns – one for a sports bra and another for a pair of leggings, both of which it says are misleading because they suggest that the lookalike garments sold by Italic are “the same as [those] sold by ALO in all respects except for the price.”
That is not the case, per ALO, which claims that Italic goes a step further by concealing the actual product names, which means that “an actual or potential consumer will not be able to go to the respective ALO and Italic websites and find the actual products being compared, which would reveal the differences in quality, craftsmanship and materials (among other things) between the products in the ad.” Additionally, ALO asserts that by simply labeling its products in the ads as “Alo Yoga,” the ads “misleadingly suggest” that ALO only makes one sports bra and that it costs $57, and one pair of leggings, which cost $91.
(And that is not all: It turns out that the price that Italic lists the ALO bra for is “literally false.” ALO says that its Airbrush Real Bra Tank is actually sold for $72, and emphasizes that the“false designation of price is material” because its products, including the Airbrush Real Bra Tank, “are extremely high quality, premium goods, and their value is reflected by the innovative designs and quality materials and are priced accordingly.” By misidentifying the product in the ad, and by displaying the incorrect price “which devalues the product,” ALO claims that “Italic misleads consumers into thinking, among other things, that ALO’s product is the same as Italic’s product, which it is not.”)
Given that the additional information that serves to disclaim any affiliation between ALO and Italic in connection with such ads takes the form of “small fine print … [that] is not legible,” it does not “rectify the false and misleading nature of the ad, or the unnecessary and unauthorized use of ALO’s trademarks, which serve only to intentionally associate Italic with ALO to consumers and trade on ALO’s goodwill.”
Aside from the physical ad campaigns, ALO argues that Italic’s “false and misleading advertising campaign is reinforced through its online website.” Pointing to the sports bra and leggings that Italic advertises by way of the bus and the billboard ads, ALO asserts that “Italic’s website makes further false and misleading statements regarding the manufacturer of the Italic and ALO products. Specifically, on its product page for Activewear products, ALO points to Italic practice of “falsely claim[ing] that its ‘Aura High Rise Legging 7/8’ and ‘Aura Racerback Sports Bra’ are made using the ‘Same manufacturer as’ Alo Yoga,” a manufacturer called Intramural Goods. The problem, according to ALO, is that Intramural Goods does not make its leggings or sports bras, which means that Italic’s statement is “false and misleading.”
With the foregoing in mind, ALO sets out claims of trademark infringement, as “the use of ALO’s trademark in commerce, in connection with the advertising of Italic’s goods or services is likely to cause confusion, mistake or deceptive as to the source or sponsorship of Italic’s goods/services, and/or the material qualities of ALO’s and/or Italic’s goods/services.”
Attempting to preempt pushback from Italic, ALO claims that the retailer’s use of its marks does not amount to nominative fair use based on Ninth Circuit precedent, which states that “in considering nominative fait use a defendant must meet three requirements: (1) the product or service in question must be one not readily identifiable without use of the trademark; (2) only so much of the mark or marks may be used as is reasonably necessary for identify the product or service; and (3) the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.” According to ALO, Italic’s “unauthorized and inaccurate use” if its marks fails to satisfy these requirements.
ALO also makes claims of false advertising/false designation of origin, and unfair competition under California state law, and is seeking injunctive relief and monetary damages.
The ALO case comes just a couple of months after luxury candle-maker Diptyque settled the false advertising, unfair competition, trademark infringement, and copyright infringement case that it waged against Italic over an ad campaign in which Italic allegedly pushes viewers towards its own candles by comparing the $16 price tag of its offerings to a $68 Diptyque candle, along with the text, “A candle that doesn’t smell like burning money,” in bold.
A rep for Italic was not immediately available for comment.
The case is ALO, LLC v. Italic, Inc., 2:22-cv-00567 (C.D.Cal.)
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