Fashion Nova is on the hook for selling wares that allegedly infringe Chrome Hearts’ trademarks. On the heels of settling the trademark suit it filed against streetwear brand MNML for allegedly co-opting its well-known cross logo for a pair of copycat jeans, the Los Angeles-based brand has initiated the latest fight in a flurry of recent infringement actions, and this time, it has set its sights on Fashion Nova, accusing the fast fashion company of allegedly selling garments “that bear identical and/or confusingly similar copies of one or more [its] trademarks” without the authorization to do so.
According to the complaint that it filed in a California federal court on Thursday, Chrome Hearts claims that it has been has been “designing, manufacturing, and selling artistically styled leather goods, apparel, jewelry, and accessories since 1988,” and in the process, has “devoted substantial time, effort, and money to designing, developing, advertising, promoting, and marketing its products, and spends on average over $1 million per year on advertising, promoting, and marketing [its] brand,” including its arsenal of trademarks.
Since setting up shop 32 years ago, Chrome Hearts says that it “has sold over a billion dollars’ worth of clothing, all bearing one or more of [its] trademarks,” and those very marks “have achieved widespread acceptance and recognition amongst the consuming public” throughout the U.S. and internationally. Among its well-known marks are a number of horseshoe-inspired motifs, which the brand claims that Fashion Nova used on apparel in an attempt to “cause confusion, or to cause mistake [among consumers], or to deceive [consumers] as to the origin, affiliation, or association” between its horseshoe-adorned products and those of Chrome Hearts. In lieu of such an association, Chrome Hearts claims that Fashion Nova’s use of “identical or confusingly similar reproductions of one or more [of its] trademarks” has “misled and confused” consumers as to the source of the products, including its “Love Warrior Crop Top.”
Seemingly taking elements from three of Chrome Hearts’ registered marks, Fashion Nova’s long-sleeved “Love Warrior” top features a stylized horseshoe motif on the back but instead of including the words “Chrome Hearts” in an Old English-type font, Fashion Nova swaps them for “Love Warrior.” Moreover, instead of featuring a Celtic cross in the middle of the horseshoe, as is the case for two of Chrome Hearts’ marks, Fashion Nova uses a rose.
Given the alleged likelihood of confusion at play and Chrome Hearts’ assertion that it “has not granted a license or given [Fashion Nova] any form of permission to use intellectual property belonging to Chrome Hearts, including the Chrome Hearts marks, in any way,” the brand claims that Fashion Nova has infringed its trademarks and engaged in false designation of origin under the Lanham act, unfair competition under California’s Business Code, and state law violations of trademark infringement and unfair competition.
Not necessarily an open-and-shut case, Chrome Hearts’ infringement claims assume that Fashion Nova is using the design at issue as a trademark, and thus, the success of it claims will likely depend on whether Fashion Nova can establish that it is using the design in a decorative manner, and not as an indicator of source, or in other words, not as a trademark. Such a distinction is significant, as purely ornamental or decorative use of a design or logo does not amount to infringement. (Under the Lanham Act and common law, a design or logo, word, etc. used in commerce is only protectable as a trademark if it is distinctive and if it is used as a trademark).
With the specific use of the horseshoe design by Fashion Nova in mind, which sees it include it on the back of a t-shirt, where brands typically include decorative elements, Fashion Nova very well may be able to argue that it is using the design in a purely decorative capacity, and not as a way to alert consumers to the source of the product in the same way as Chrome Hearts does when it uses its horseshoe.
Hardly an unheard of argument in an apparel context, H&M, for instance, argued in the declaratory judgment action that it filed against Wildfox Couture a few years ago that its use of the word WILDFOX emblazoned on the front of the sweatshirt was ornamental, and consumers would not perceive it as identifying the source of the product. H&M contended that there was no likelihood of confusion between its design and Wildfox’s trademark because the average consumer would not associate H&M’s sweatshirt logo with Wildfox Couture. (The case ended up settling out of court just a couple of months after it was filed).
H&M’s argument was in line with the late Supreme Court Justice Antonin Scalia’s decision in the Wal-Mart v. Samara Brothers case, in which he held that “consumers are aware of the reality that, almost invariably, even the most unusual of product designs – such as a cocktail shaker shaped like a penguin – is intended not to identify the source, but to render the product itself more useful or more appealing.”
The U.S. Patent and Trademark Office has also spoken to such use in connection with apparel, albeit in a registration context, stating, “A slogan prominently displayed on the front of a t-shirt may be considered merely ornamental use and not trademark use.” That is because “most purchasers of the t-shirts would not automatically think the slogan identified the source of the goods but would view the slogan only as a decoration on the goods.” While there is not necessarily a slogan at play in the case at hand, but a motif, the same general logic applies.
Even with the foregoing in mind, the distinction is still not always black and white. It is worth noting, as University of New Hampshire School of Law professor Alexandra J. Roberts does in her paper, Trademark Failure to Function, that “most trademarks are capable of doing both, and they frequently do.” A mark can be decorative and source-indicating at the same time. For instance, “A mark can be … a decorative source indicator like the Nike ‘swoosh.'” Against that background, she states that “the emphasis for use as a mark must be on the matter’s failure to function as a source indicator – its failure to do the job of a trademark – rather than its simultaneous role as something else.”
Ultimately, Chrome Hearts argues that it has been injured by Fashion Nova’s use of the lookalike design, and is seeking injunctive relief to bar Fashion Nova and any of its agents from “manufacturing, importing, advertising, marketing, promoting, supplying, distributing, offering for sale, or selling Infringing Products and/or any other products that bear the Chrome Hearts trademarks, or any other marks confusingly similar thereto;” an order directing Fashion Nova “to recall from any distributors and retailers and to deliver to Chrome Hearts for destruction, or other disposition, all remaining inventory of the infringing products;” and monetary damages.
A rep for Fashion Nova was not immediately available for comment.
UPDATED (January 14, 20201): The parties have settled their differences out of court, according to a notice of settlement and joint stipulation to stay all deadlines for (30) days filed by Chrome Hearts.
*The case is Chrome Hearts LLC v. Fashion Nova, Inc., 2:20-cv-07068 (C.D. Cal.).