Image: Gap

Gap is looking to chip away at the jacket-centric lawsuit that Patagonia first waged against it late last year. On the heels of Patagonia accusing Gap of running afoul of federal trademark law and California state law by offering up jackets that infringe the source-indicating design of its Snap-T Fleece trade dress, as well as its P-6 mountain logo and PATAGONIA word mark, Gap argues in a newly filed motion to dismiss that Patagonia bases part of its claims on “implausible allegations” that it has violated Patagonia’s rights in the PATAGONIA mark. Since Patagonia’s complaint contains “no allegations that Gap is using PATAGONIA or any similar mark,” Gap urges the court to dismiss the purpose-driven retailer’s causes of action with regard to the PATAGONIA mark. 

In its January 5 motion, Gap asserts that Patagonia’s complaint alleges that its Arctic Pullover infringes “(i) [Patagonia’s] alleged trade dress rights in the design of a fleece pullover, the Snap-T fleece; (ii) its ‘P-6’ mountain logo; and (iii) the PATAGONIA trademark,” which Patagonia “collectively (and misleadingly) define[s] in the complaint as the ‘PATAGONIA trademarks.’” (FYI: Patagonia alleges that its Snap-T fleece trade dress consists of “a snap placket and matching pocket flap, rendered in contrasting color from the fleece and in different fabrication. Piping is used on the collar, cuffs, and waist and is often rendered in a contrasting color. The rectangular P- 6 logo is placed above the pocket flap.”)

While Patagonia makes allegations in its complaint as to the similarity between the design of its Snap-T fleece trade dress and its P-6 logo, and Gap’s Arctic Pullover jacket (allegations that Gap says that it “disputes”), Gap asserts that Patagonia “does not allege that [it] has used any mark similar to PATAGONIA, nor could it since Gap markets its product under its well-known GAP trademark.” 

Patagonia fleece (left) & Gap fleece (right)
Patagonia fleece (left) & Gap fleece (right)

In light of Patagonia’s claims that it owns a number of federal registrations for the PATAGONIA mark without any allegations that Gap uses the PATAGONIA name or any similar mark in connection with its sale of the “copycat” jacket, Gap asserts that the complaint “fails to meet basic pleading requirements for trademark infringement, trademark dilution, or unfair competition in this Circuit as to the PATAGONIA mark,” and thus, must be partially dismissed.

Specifically, Gap contends that because Patagonia does not allege that it “uses PATAGONIA or any mark similar thereto,” and because GAP – which is the brand name that the Arctic fleece jacket is sold under, Gap argues – “is so dissimilar from PATAGONIA, there can be no likelihood of confusion with respect to the PATAGONIA mark as a matter of law.” And more than that, Gap claims that Patagonia makes no allegations “as to confusion between GAP and PATAGONIA based on how the marks are encountered in the marketplace,” noting that “the aggregate result” of the differences between the two marks (namely, in “sight, sound, and meaning”) is that “the marks present completely different commercial impressions.” 

Still yet, because the complaint “contains no allegations that Gap is using PATAGONIA or any similar mark and because PATAGONIA is so dissimilar to GAP, there can be no dilution as a matter of law” either, according to Gap. As such, the court should partially dismiss the Patagonia’s claims with regard to the PATAGONIA mark. (As of now, Gap is not arguing for the dismissal of Patagonia’s trademark claims based on the Snap-T fleece or the P-6 mountain logo.)

Confusion, Collaborations

Gap’s motion comes on the heels of Patagonia alleging in November 2022 that the San Francisco-headquartered mall retailer is selling copies of its “immediately recognizable” Snap-T fleece design, complete with a rectangular logo that is “highly similar” to Patagonia’s P-6 logo. Taken together, the fleece design and the logo are “designed to make it appear as though Patagonia is the source of Gap’s products or has collaborated with Gap or authorized use of its trademark and trade dress,” the plaintiff has argued in its lawsuit. Patagonia further asserts that “close ups comparing the pocket and logo designs highlight the similarities in design, coloration, and placement,” and states that “not all consumers will ‘zoom in’ [on the Gap rectangular logo]” – which depicts the words “Gap Original Arctic Fleece” against a mountain range – “either at point of sale or post-sale.”

And even if consumers do zoom in, Patagonia maintains that “they are likely to believe this is one of Gap’s many collaborations.”

Patagonia label (left) & Gap label (right)
Patagonia label (left) & Gap label (right)

Patagonia’s argument that there is an increased likelihood of confusion as a result of Gap’s history of collaborations is an interesting one in light of the larger – and enduring – pattern of fashion brands, including mass-market entities like Gap (which until relatively recently was collaborating with the likes of Balenciaga and Kanye West), working together and increasingly, mashing up their logos for the purpose of such collabs. For the Yeezy Gap collab, for instance, Gap debuted a collection-specific logo that combined its signature navy blue hue with Yeezy LLC’s “YZY” mark. 

Not a novel claim, Burberry actually argued this point in the trademark lawsuit that it filed against Target in 2018, for instance, in which the British fashion brand’s counsel claimed that consumer confusion was likely to abound in connection with the checkered wares being sold by Target due to the the retail chain’s “well-publicized history of collaborating with popular brands and fashion designers to promote and sell Target-exclusive limited-edition collections.” In other words, because Target has engaged in a string of collaborations in the past, consumers are more likely to consider the potential of collaborative wares going forward. Skip to 2023 and the frequency – and sheer expansiveness and diversity – of collabs has increased significantly. 

Also worth noting … Patagonia asserts that this is not the first clash between the parties. It claims that it “also warned Gap in prior years to stop copying its products, trade dress and logos, including designs that infringed Patagonia’s Snap-T trade dress.”

And finally, Patagonia alleges in the lawsuit that the damage that stems from Gap’s allegedly “willful and deliberate” infringement is potentially pretty significant, as it “believes that Gap has marketed and sold substantial quantities of [infringing] products … and has profited and continues to profit from such sales,” hence Patagonia’s bid for “treble the amount of Gap’s unlawful profits,” as well as damages and an award of attorneys’ fees.

The case is Patagonia, Inc. v. The Gap, Inc., 3:22-cv-07437 (N.D. Cal.)