Image: Away

Away is taking Macy’s and the maker of one of its exclusive luggage lines to court for allegedly stealing its most closely-held design specifications and supply chain details to make rival products, all under the guise of exploring what the defendants presented as a “potential business opportunity.” That is what Away argues in a newly-filed lawsuit, setting forth claims of trade secret misappropriation, breach of contract, trade dress infringement and dilution, false designation of origin, and unfair competition, among others.

According to the complaint that counsel for Away filed in a New York federal court on Friday, Olivet International – the luggage licensee/manufacturer for Jessica Simpson, Dockers, Sharper Image, and Revo, among other brands – contacted Away in August 2017, inviting individuals from the budding young luggage company to “meet and discuss opportunities to develop a [manufacturing] partnership.”

Representatives for the two companies did, in fact, meet to discuss a potential venture, in furtherance of which they “entered into a nondisclosure agreement pursuant to which Away disclosed proprietary and confidential information to Olivet for the purpose of evaluating whether Olivet could manufacture Away’s polycarbonate luggage in a manner that exactly replicates Away’s products.”

Despite “extended discussions regarding a potential partnership,” Away ultimately notified Olivet in November 2018 that due to “existing tariffs on suitcases and raw materials,” it would not switch to using Olivet’s manufacturing facilities for the time being, but informed Olivet that it would be happy to revisit the discussion in March 2019.

But before the parties could resume discussions this month, Olivet allegedly took all of the proprietary information that Away had shared with it for the purposes of their discussions and used to to create near-exact copies of Away’s popular luggage, running afoul of trade dress law and breaching its non-compete agreement in the process.

According to Away, it learned on January 7 that Macy’s had begun “offering for sale on its website and in retail stores the Trips Luggage Collection, a line of luggage that Olivet deliberately designed to, and that does, look strikingly similar to Away’s distinctive polycarbonate collection,” going so far as to market the collection as “encompassing the look and quality of the most notable name brands in luggage.”

According to Away, since it was founded in 2015 by former Warby Parker executives Stephanie Korey and Jennifer Rubio, it has made suitcases of a “consistent and distinctive look and feel,” i.e., the Away trade dress. To be exact, the company’s trade dress consists of a suitcase “made of polycarbonate material with a matte finish with a grainy texture in muted colors; shaped like a rounded rectangle, whether viewed from the front, the side or the top; covered with horizontal, indented ridges, which are evenly spaced and extend around the sides of the suitcase; [and including] a black zipper [that] is held in place and framed by a black welt that runs around the perimeter of the suitcase,” among other elements.

Thanks to widespread media attention, including “approximately 2,000 stories in the press,” a handful of “well-known celebrity” fans, and over “$100 million of sales in the U.S. over the past year,” alone, Away’s trade dress has become “enormously popular and successful,” and “has acquired secondary meaning.” In other words, when consumers see the design of an Away suitcase, they associate it with a single source. Legally speaking, that is significant, as the design of a product may only be protected by trademark law if it has acquired secondary meaning.

The problem here, according to Away? Olivet took “nearly all of the elements that make up [its luggage] trade dress, and combined and arranged them in a nearly-identical manner,” thereby, recreating the precise “look and feel of Away’s trade dress.” The result: suitcases that are “strikingly” similar to Away’s suitcases but that bear the Olivet brand name.

Despite Olivet making some “minimal changes … to the design of the Trips Luggage,” an ordinary consumer would almost certainly “be deceived into thinking that the Trips Luggage originates from, or is authorized, sponsored, or approved by Away, or that Away [Macy’s and Olivet] are otherwise connected or associated.”

Away’s luggage (left) & Olivet’s luggage for Macy’s (right)

In fact, Away claims, the similarity between the two companies’ bags is so significant that consumers have actually been confused as to the source of Olivet’s bags. As indicated by screenshots included with Away’s complaint, Instagram users have not been immune to the lookalike nature of the two companies bags. For instance, on one instance, an Instagram user commented on an image of an Olivet bag, saying, “Thought this was the Away luggage.” On another photo of an Olivet suitcase, an Instagram user stated, “I thought that’s what it was at first,” referring to Away’s bags.

Still yet, Away asserts that “another consumer who bought a ‘Trips’ product from Macy’s mistakenly contacted Away to activate her warranty,” the complaint asserts, “having been duped into believing that the ‘Trips’ product she purchased from Macy’s originated from Away.” 

Such instances of consumer confusion are noteworthy, as the central inquiry in trademark and trade dress infringement cases is whether consumers are likely to be confused as to the source of the allegedly infringing products. Here, Away has been able to show actual confusion.

In addition to naming Olivet as a defendant, Away adds the far deeper-pocketed Macy’s as a defendant, alleging that not only does Macy’s exclusively stock the lookalike designs, Olivet “copied Away’s trade dress on the Trips Luggage with the support and active encouragement of Macy’s,” making the department store chain liable, as well.

With the foregoing in mind, Away asserts an array of claims ranging from trade dress infringement and dilution to false designation of origin and unfair competition. The company has asked the court to immediately and permanently force Macy’s and Olivet to cease all manufacture and sales of the allegedly infringing luggage. Away is also seeking damages of a sum that will be determined at trial.

While reps for Macy’s and Olivet were not immediately available for comment, Away’s General Counsel Josh Beser, said in a statement on Friday, “We don’t claim to have a monopoly on great luggage—in fact, we welcome the competition because it means that travelers today have more options than ever before—but we do have a deeply rooted belief in the value of creative integrity, and we won’t tolerate blatant copying of the products and designs that have become synonymous with Away.”

UPDATED (June 21, 2019): According to a rep for Away, “The involving Olivet International, Inc. and Macy’s, Inc. was amicably resolved.”

*The case is JRSK, Inc. d/b/a Away v. Olivet International, Inc. Macy’s, Inc., 1:19-cv-02589 (SDNY).