Glossier claims that when consumers see a box with a millennial pink interior, they automatically link it – and the products inside – with its brand. Looking beyond its most immediate branding, Glossier – which nabbed a $1.2 billion valuation last year after raising $100 million in series D funding – applied to register two iterations of its product packaging with the U.S. Patent and Trademark Office (“USPTO”) in March 2019: its millennial pink-lined boxes and similarly pink bubble wrap-lined zip-lock pouches for use in connection with its marketing and sale of “cosmetics; makeup; [and] skincare products.”

Asserting that “there is no utilitarian, functional, economic, or competitive advantage to the color pink as applied to the inner surface of boxes,” and citing its pattern of consistently using the pink-lined boxes for the past five years, Glossier essentially claims that its specific use of millennial pink on the interior of packaging boxes acts as a trademark – and identify the source of the products – in much the same way that a brand name or logo does. And with that it mind, the buzzy beauty unicorn is pushing for a registration for its use of “the color pink as applied to the inner surface of portions of boxes that contrast with the color of the rest of the boxes” in connection with the sale of skincare and cosmetics. 

The concept of a color – or better yet, the specific use of a specific color – as a trademark is not unheard of; Tiffany & Co. and Christian Louboutin, among others, maintain valid trademark rights in their proprietary uses of certain colors. Nonetheless, the USPTO has been a bit hesitant (which is not uncommon when it comes to quest to protect uses of colors), and preliminarily refused to register Glossier’s mark in August on that basis that the use of the color pink on the inside of a box is decorative and thus, does not function as a trademark. According to the USPTO, consumers are not likely “to perceive the color pink as identifying the origin of [Glossier’s] goods; but rather, they will perceive the colors as decorative features … because they are accustomed to encountering various colors, including pink, on various packaging for cosmetics and beauty care goods.” 

Glossier has responded to the USPTO’s Office Action in late February and refined the language of the trademark description to limit its scope from pink-lined boxes generally to the “color pink [as applied to the inner surface of portions of boxes] so that it contrasts with the rest of the box.” 

Additionally, the brand’s counsel asserted, among other things, that the pink-lined box mark has established the necessary secondary meaning to function as a trademark – given “the extensive evidence … that relevant consumers immediately recognize [its unique and distinctive use of] the color pink as applied to only the interior of a box indicates that the cosmetics and skincare products originate from Glossier and not from any other source.” 

While it appears that Glossier has successfully made its case for why its mark should be registered, as the USPTO examiner states in a March 19 letter that its previous refusal on the basis of failure to function has been “obviated by sufficient Section 2(f) claim,” there is a new issue at play. The USPTO has suspended the application. 

In a letter last month, the USPTO alerted Glossier that its application has been put on hold, so to speak, for the time being because there is a pending trademark application that “has an earlier filing date or effective filing date than [Glossier’s] application” that, if registered, may cause the USPTO to refuse to register Glossier’s mark “because of a likelihood of confusion with the registered mark.” (The USPTO will not register a mark that conflicts with – i.e., is confusingly similar to – a mark that is either registered or currently pending).

What is at the center of that other pending application? A word mark for “PINKBOX” for use on cosmetics; “computer application software for mobile phones namely, software for providing episodic television and virtual reality; downloadable films and virtual reality content featuring dramatic and comedic storylines”; “comic books; graphic novels; series of fiction novels”; and “Entertainment services, namely, arranging social entertainment events in which users can participate in virtual reality viewings; entertainment services, namely, virtual reality arcade services.” 

As it turns out, Brandi-Ann Milbradt beat Glossier to the punch in filing an application for “PINKBOX” in November 2016, and while the USPTO previously gave preliminary approval for the registration of the mark (by way of a September 2018 notice of allowance), there is one lingering issue at play: Milbradt – a producer, who was tapped by Refinery29 in 2015 “to spearhead its effort to generate original video content” – has not been able to show that she has used the mark in connection with all of the goods/services she listed on her application. 

While Milbradt has provided the USPTO with evidence that she has used the mark in connection with “entertainment services,” she still needs to do the same for the other classes of goods/services listed in her application in order for the mark to be registered for those classes. (Actual use of a mark in commerce is a pre-requisite to trademark registration in the U.S.).

Interestingly, while Glossier’s pink-lined packaging and the “Pinkbox” mark are quite different from a practical perspective (one is a word mark and the other is product-packaging trade dress), the USPTO explicitly states that “it is not required that the marks and the goods/services be exactly the same” in order for there to be a conflict. Instead, “it is sufficient if the marks are similar” – in terms of appearance, meaning, and/or sound – “and the goods and or services related such that consumers would mistakenly believe they come from the same source.”

That is likely the case here since while the marks, themselves, are not identical in nature, both parties list cosmetics as goods on their applications. Moreover, as trademark counsel Cynthia Clarke Weber states, “Trade dress creates a visual impression which functions like a word trademark,” so much so that “the U.S. Supreme Court confirmed in Two Pesos and Qualitex there is really no difference between a word trademark and a visual trademark except that a word mark may be spoken while trade dress and color per se must be seen to make a commercial impression.’

As a result of the pending “Pinbox” mark, the USPTO will wait to see whether Milbradt will be able to show use of her mark on the remaining goods/services at play, and says that it “will periodically check [Glossier’s] application to determine if it should remain suspended.”  

In the midst of the annual Major League Baseball All-Star Game in July 2017, New Era rolled out a collaboration specifically for the occasion. The well-known sportswear company – which has sold tens of millions of baseball hats since its founding in 1920 – enlisted the help of designer Jerry Lorenzo, the designer behind buzzy Los Angeles-based brand Fear of God, and the two launched a collection of hats and other products bearing the New Era and Fear of God names, and debuted them in connection with the All-Star Gam, which took place at Marlins Park baseball stadium in sunny Miami. 

The collab’s wares would go on the be featured in streetwear publications; the hats would find homes on resale sites for multiples of the initial retail price tags, and would appear on celebrities like Justin Bieber. They would also land New Era on the receiving end of a lawsuit filed by a college student in Massachusetts. In a May 2018 lawsuit, Averil Hilton argued that the Buffalo, New York-headquartered company had infringed the trademark of her brand – a religious streetwear brand called GOD’S ERA – when it teamed up with Fear of God.

By “incorporating the term GOD into the commercial impression of the NEW ERA trademark” and using it “in connection with the sale of apparel” two years after she first began using the GOD’S ERA trademark for her sale of apparel that combines the “streetwear of urban youth culture together with an unabashed love and passion for God and Christianity,” Hilton asserted that New Era was “likely to cause confusion and deceive consumers as to the origin, sponsorship, or approval of [New Era’s] products.” In other words: the hat company was engaging in trademark infringement.

More than that, Hilton argued in the complaint that she filed in a Massachusetts federal court that New Era was “causing an adverse commercial impact upon [her brand] and intending to deliberately push [her] out of the casual streetwear market by flooding the market with advertising and promotion of [its own] infringing trademark and apparel.” As a result, she asked the court to intervene and to stop New Era from (allegedly) infringing her mark any further.

As Hilton’s suit would reveal, a trademark-centric squabble had been underway for more than a year before Hilton filed suit. As Hilton set out in her complaint, the parties had been facing off before the U.S. Patent and Trademark Office (“USPTO”) ever since New Era had formally opposed the trademark application for registration that she had filed for her brand’s logo, which consists of the word “GOD’S” in all capital letters positioned above the word “ERA” and two elongated dashes. 

According to New Era’s opposition, the registration of Hilton’s “GOD’S ERA” mark should be blocked because it would “cause a likelihood of consumer confusion, mistake, or deception between the ‘God’s Era’ mark and [an array of New Era’s federally registered] trademarks,” which Hilton denies given “the prominence of the word ‘GOD’ in the commercial impression of [her] mark,” thereby, clearly distinguishing it from New Era’s many trademarks for its name.

Just about “three months after New Era opposed the registration of [Hilton’s] ‘GOD’S ERA’ mark” in March 2017, Hilton says that the brand released its Fear of God collaboration, which prompted her to file suit against New Era (Fear of God was not named as a defendant in the case) on the basis of common law trademark infringement (as opposed to a federal claim, as Hilton’s application is still pending before the USPTO), as well as unfair competition and false designation of origin.

Now, almost 2 years later, New Era has landed a win in the case, with a federal judge in Massachusetts determining that Hilton lacks the necessary rights in the “GOD’S ERA” trademark to successfully wage an infringement fight against New Era. 

In a memorandum and order dated March 31, Judge Indira Talwani of the U.S.District Court for the District of Massachusetts sided with New Era, holding that “because [Hilton’s] GOD’S ERA trademark was not registered [with the USPTO], the court must determine whether and to what extent the GOD’s ERA mark was entitled to common law trademark protection at the time of the alleged infringement.” (Unlike a federal registration, which is enforceable on a nation-wide basis (even if the mark is not used in every state or city), common law rights are generally only enforceable in the geographic regions where the trademark owner can show that he/she is actually using the mark).

Establishing that the test for determining common law rights “is whether the party’s mark is sufficiently known [in a specific jurisdiction], or whether its sales there are of sufficient volume, to create a likelihood of confusion among consumers, should a second user enter the same territory,” Judge Talwani found that Hilton’s brand does not meet the standard in connection with New Era’s allegedly infringing use. 

“God’s Era produced receipts totaling $235 for [nine total] sales … [for the period of time] from its founding in March 2015 through the [period of alleged infringement of the] July 2017 All-Star Game,” according to the court, which also stated that “as of March 26, 2018, God’s Era had made no sales ‘in interstate commerce.’”All of those sales “were made in person by Ms. Hilton in the greater Boston area.” 

As a result, while Hilton “had acquired exclusive rights to the use of the GOD’S ERA mark in the greater Boston area, those rights cannot be found to extend to Miami, Florida, where [New Era’s Fear of God] caps were sold and the bags bearing the [allegedly infringing] trademark were distributed.” Similarly, the court stated that such trademark rights could not “be found to extend to Los Angeles, California, where [New Era] sent one shipment of caps to Fear of God.”

“Because [Hilton] has not established that the GOD’S ERA mark was protected in the geographic regions where the products bearing the [allegedly infringing] mark were sold during 2017, it has not established the possibility of infringement on the part of [New Era],” the judge stated.  

Without a finding of exclusive rights, the court did not consider the question of “whether use of the [allegedly infringing] mark presents ‘a likelihood of confounding an appreciable number of reasonably prudent purchasers exercising ordinary care.’”

The court also sided with New Era in connection with Hilton’s unfair competitionclaims “for the same reasons.” 

While the parties’ lawsuit may be out of the way, the trademark opposition proceedings are still underway before the USPTO’s Trademark Trial and Appeal Board. 

*The case is God’s Era v. New Era Cap Co., Inc, 1:18-cv-11065 (D. Mass.).

In a highly-anticipated decision involving Amazon and the German arm of cosmetics giant Coty, the European Union’s highest court sided with Amazon, holding that it is not enough for an e-commerce platform operator, such as the $1 trillion titan that is Amazon, to merely store and distribute orders consisting of unauthorized or infringing goods in order to be found liable for trademark infringement. Filed by Coty Germany in 2014, the case got its start after a Coty investigator ordered the company’s Davidoff Hot Water fragrance from Amazon’s third-party marketplace, only to receive an allegedly infringing product, in furtherance of the order, which was “Fulfilled by Amazon.”

Coty filed a trademark infringement lawsuit against Coty in the Bundesgerichtshof Federal Court of Justice, a regional court in Germany, taking issue with Amazon’s sweeping fulfillment program, under which Amazon enables its third-party sellers to store their products in its fulfillment centers, and after a sale takes place on its marketplace platform, Amazon “packs, ships, and provides customer service” in connection with that item.

Amazon argued that it should not be held liable because it was simply an intermediary and the seller of the fragrance. Following two favorable rounds for Amazon, in which the lower court and the court of appeal determined that it was legally in the clear, as it had not merely stocked the infringing goods on behalf of third parties, the case was referred to the Court of Justice of the European Union (“CJEU”). 

In particular, the CJEU was tasked with answering the question of whether a company that stores infringing goods for a third-party seller for the purpose of offering them or putting them on the market can be held liable for infringement. In its decision on Thursday, a panel of judges for the CJEU held that an operator is not regarded as an “infringer” in accordance with EU trademark law when the operator “on behalf of a third party, stores infringing goods in order to offer them or put them on the market … [but] does not itself pursue those aims” itself.

In other words, storage, alone, is not enough to give rise to infringement liability; a company “must pursue, like the seller, the aim of offering the goods for sale or putting them on the market.” 

With the larger question of storage-related liability out of the way, the case will now go back before the district court in Germany, as CJEU Advocate General Sanchez-Bordona stated in his advisory opinion late last year, a question that is not on the table for the CJEU to decide – but instead, for the German court which initially heard the case before referring it to the CJEU for guidance: whether the defendants in the case, including Amazon, are civilly liable for trademark infringement in connection with that sale  of the fragrance at issue.

Nonetheless, as World Trademark Review asserted on Thursday, “The decision appears to clarify the scope of responsibility for online marketplaces when it comes to the sale, or storage, of counterfeit goods. The opinion of Coty, and the view of other major brands (especially in the luxury fashion space), is that online platforms like Amazon and eBay should be held liable for fake goods they are warehousing and delivering. However, today’s decision suggests that the argument – at least in the EU – will not hold up.”

The latest development in the case comes as Amazon and other online marketplace and resale websites continue to face pushback from rights holders in connection with the sale of counterfeit and otherwise infringing goods on their platforms, with Reuters reporting that the case at hand “underlines the tension between luxury goods companies seeking to preserve their exclusivity and branding and online platforms, such as Amazon and eBay, fighting against online sales curbs.”

More than merely a fight about outright fakes, though, sites like Amazon continue to face off against brands over the sale of authentic but unauthorized products, given how significantly digitally-native companies and third-party marketplaces have disrupted the ability that brands once had to control almost exactly how and where their products were sold, and at what prices.

In response to claims that the Jeff Bezos-founded company was not doing enough to eradicate counterfeits on its site, Amazon’s Vice President of Public Policy Brian Huseman asserted in the 4-page letter he wrote to Acting Assistant U.S. Trade Representative for Innovation and Intellectual Property Daniel Lee this fall that while brands may be calling foul – or better yet, calling “fake!” – in connection with products that are actually fake (and there are plenty of those on Amazon’s crowded marketplace), they are also putting that very same label on authentic goods being sold on Amazon’s marketplace without their explicit authorization.

According to Huseman, at least some brands are “conflating concerns about counterfeits with … the ‘unauthorized’ distribution of authentic products” in an attempt to control how/where their products are sold.

The immediate impact of the coronavirus shutdown is striking in its magnitude and the speed at which it has spread. Based on labor statistics coming out of both the U.S. and Australia, which provide takeaways for countries across the globe, the effects of the global health pandemic are being concentrated in a group of specific industries, in particular, making jobs – and thus, individuals – within those industries among those at the greatest risk. 

For one group of about 1.4 million workers in Australia – primarily those in the restaurant, entertainment, recreation, travel (and thus, travel retail), accommodations, and air travel industries, “the risk of loss of work is the inevitable result of government intervention,” according to University of Melbourne Economics professor Jeff Borland, whether that be mandated non-essential business shutdowns or enduring government restrictions on travels, as the country was “approaching a nationwide lockdown” as of late last month.

Another particularly high-risk group, one that comprises about 900,000 workers in Australia, is retail and personal services, “where the effect on jobs is coming from the largescale pattern of consumers cutting spending on everything but essential items,” paired with often-required store closures. Nike, for instance, was among one of the major global brands to announce last month that it would close all of its stores in Australia, with others expected to follow suit.

Within the expansive retail sector, Borland found that the “clothing, footwear, and personal accessories” industry is in a particularly precarious position “due to the fact that households are reducing purchases of durable goods,” with the same risks carrying over the department stores and their workforces.

Borland notes that the laborers that populate these “at-risk” segments are predominantly young (more than half are under 35 years of age), and a slightly higher proportion are female than male. 

Meanwhile, in the U.S., the Pew Research Center states that “nearly one-in-four workers – 38.1 million out of 157.5 million – are employed in the industries most likely to feel an immediate impact from the COVID-19 outbreak.” Among the most vulnerable, according to the Washington, DC-based think tank, are those who work in retail trade, and food and beverage services industries, which employ nearly 26 million Americans, and are already being hit hard by layoffs and declining revenues. 

For U.S. workers, much like their Australian counterparts, “young people are set to be disproportionately affected by COVID-19 virus-related layoffs,” as are women: 19.4 million workers in these “high risk” industries are women compared with 18.7 million men, according to Pew. The think tank further asserts that “there are slightly fewer white workers in the higher-risk industries relative to their share of the workforce overall, while black and Hispanic workers have a slightly larger presence in these industries.”

Specifically addressing retail, which employs some 16.2 million workers, Pew states that “employment outcomes are more uncertain” than in other industries. “While brick-and-mortar operations are at higher risk because some are closed by government mandate and shoppers are otherwise encouraged to stay home,” it notes that “e-commerce shopping providers may stand to benefit.” 

As for the job market more generally, Heidi Shierholz, senior economist at the Economic Policy Institute, told Yahoo Finance that in the past, “low middle income workers [have been] hit harder by recessions.” This will not only remain the case for the COVID-19-spurred downturn, she says that “this is going to be more true than ever before because many of the workers who are profoundly affected by the social distancing measures are low wage workers, such as brick-and-mortar retail staff.”

The COVID-19 crisis may be putting a sizable dent in fashion industry revenues, with the fashion and luxury goods segments slated to lose between $450 and $600 billion in sales in 2020, but that is not stopping brands from enforcing the rights they have in their valuable trademarks. In a multi-million trademark infringement and counterfeiting complaint filed in a federal court in Florida late last week, Versace is calling foul on dozens of counterfeit-sellers, alleging that “like many other famous trademark owners in the luxury goods market, Versace suffers ongoing daily and sustained violations of its trademark rights” at the hands of bad actors. 

According to Versace’s recently-filed complaint, the defendants, who are identified almost exclusively by domain name, are “wrongfully reproducing and [using] counterfeit Versace trademarks” – from the brand’s well-known name to its protected Greca chain pattern – in connection with the sale of “inferior quality garments and accessories for the twin purposes of duping and confusing the consuming public; and earning substantial profits across their e-commerce stores.” 

To be exact, Versace claims that in furtherance of their digital scheme, the defendants are using its “famous brand name and trademarks to drive internet consumer traffic to their e-commerce stores,” thereby, “decreasing the size and value of Versace’s legitimate marketplace and intellectual property rights at Versace’s expense.” More than that, the Versace asserts that the defendants are also “directly engaging in unfair competition with Versace by advertising, offering for sale, and selling goods bearing and/or using counterfeits and infringements of one or more of Versace’s trademarks to consumers in the U.S.,” where the brand says that it has “spent millions of dollars promoting the Versace trademarks and products bearing the Versace Mark,” and where the “annual sales of products bearing the Versace trademarks have totaled into the hundreds of millions of dollars.” 

By using Versace’s trademarks “to initially attract online consumers, drive them to [their] e- commerce stores,” and ultimately, offer for sale and sell “different quality goods [that bear] identical copies of one or more of Versace’s trademarks,” the defendants are “likely to cause confusion of consumers at the time of initial interest, sale, and in the post-sale setting,” according to Versace, which argues that consumers “will believe all of the defendants’ goods … are genuine goods originating from, associated with, and/or approved by Versace.”

In addition to harming consumers, the defendants are “causing individual, concurrent and indivisible harm to Versace” by “depriving Versace and other third parties of their right to fairly compete for space within search engine results and reducing the visibility of Versace’s genuine goods on the web; causing an overall degradation of the value of the goodwill associated with the Versace trademarks; and increasing Versace’s overall cost to market its goods and educate consumers about its brand via the Internet.” 

Versace argues that the “in order to combat the indivisible harm caused by the combined actions of the defendants and others engaging in similar conduct, [it] expends significant monetary resources in connection with trademark enforcement efforts each year,” particularly since “the exponential growth of counterfeiting over the Internet has created an environment that requires companies, such as Versace, to expend significant time and money across a wide spectrum of efforts in order to protect both consumers and itself from the ill effects of confusion and the erosion of the goodwill connected to the Versace brand.” 

With the foregoing in mind, Versace sets forth claims of trademark infringement and counterfeiting, false designation of origin, and unfair competition, and has asked the court for injunctive relief, which would immediately and permanently prevent the defendants from engaging in such counterfeiting and infringement. Additionally, the Italian brand is seeking an order requiring the defendants to pay up “all profits and damages resulting from [their] trademark counterfeiting and infringing and unfairly competitive activities,” or to pay statutory damages in the amount of $2,000,000 per each counterfeit trademark used and product type sold. 

*The case is Gianni Versace S.R.L. v. The Individuals, Partnerships and Unincorporated Associations Identified on Schedule “A,” 0:20-cv-60618 (S.D. Fla.).