Gap is looking to escape the trademark infringement, unfair competition, and deceptive trade practices lawsuit filed against it by Patagonia, arguing that the outdoorwear-maker waited way too long to wage a trademark suit against it. In the answer and counterclaim that it filed with a federal court in California on February 21, Gap claims that Patagonia “unreasonably delayed bringing its claims,” thereby, barring those claims by the defenses of laches, and acquiescence, waiver, and estoppel. Gap’s answer and declaratory judgment counterclaim come in response to the lawsuit that Patagonia filed against it in November 2022, in which it accuses the San Francisco-based retailer of 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.
Delving into its laches argument, Gap claims that the parties’ clash actually goes back more than seven years when Patagonia learned that Gap – through its affiliate Old Navy – “was offering for sale and selling products nearly identical to Gap’s the [allegedly infringing Arctic Pullover] jackets under [its] Old Navy brand.” Patagonia first contacted it regarding the Old Navy jackets via a cease-and-desist letter in October 2015, Gap says, and in “multiple communications” in November and December 2015, the company claims that it “stated unequivocally that it did not agree with [Patagonia’s] claims and would not meet [its] demands.” Gap asserts that Patagonia “did not respond” to its “last letter on December 11, 2015.”
Aside from the color blocking, “in which [Patagonia] does not and cannot claim rights,” Gap contends that the “only notable distinction” between the Old Navy jackets – which allegedly infringed Patagonia’s trademarks – and the Gap Arctic Pulloverjackets that prompted this lawsuit at hand is the logo above the pocket flap. “The former bears the OLD NAVY mark, while the later bears the GAP ORIGINAL ARCTIC FLEECE design mark,” complete with a snow-capped mountain range design. (The implication here, of course, is that Patagonia should have filed a trademark suit sooner in light of the similarities between the jackets.)
Gap doubles-down on its laches argument, stating that its use of rectangular patches bearing a mountain range design dates back even further to the “early 1990s” when it used a mark “with a nearly identical design” to the one that appears on its allegedly infringing Arctic Pullover jackets in this case. In particular, Gap claims that it offered up a jacket with “the same color scheme and mountain imagery” – and it did so “without objection from” Patagonia.
For these reasons, Gap asserts that Patagonia’s claims are barred by laches, as well as acquiescence, waiver, and estoppel.
Not finished, Gap asserts a claim of its own in the answer, stating that it is “in need of, and is entitled to, a judicial declaration that the design for [Patagonia’s] Snap T product does not function as an indicator of source, and therefore, [Patagonia] does not own any common law trade dress rights in that design.” In furtherance of its declaratory judgment claim, Gap asserts that while Patagonia claims to own common law trade dress rights in the overall design of its Snap-T product, such rights do not exist because …
Public domain – “The overall design of the jacket is not protectable trade dress and is in the public domain,” as evidenced by similar jackets being offered up by other companies, including LL Bean, Land’s End, Columbia, Vineyard Vines, Bonobos, J. Crew, and Walmart.
Failure to function – The overall design of the Snap T product does not function as trade dress because it is comprised of functional elements, namely, reinforced placket and piping, fleece designed to keep the wearer warm while remaining lightweight, a conveniently placed pocket and a pocket flap designed to hold sunglasses in a diagonal position away from the wearer’s armpit.
No acquired distinctiveness – The overall design of the Snap T product does not function as trade dress because it has not acquired distinctiveness such that it does not indicate the source of Plaintiff’s goods and distinguish the goods from those sold by other companies.
In light of this “actual, present, and justiciable controversy,” Gap calls on the court to declare that the overall design of Patagonia’s Snap T product does not constitute protectable trade dress, that it is, therefore, not entitled to any relief with respect to the sale of the Gap jackets, and that Gap is entitled to sell and market the allegedly infringing jackets.
The case is Patagonia, Inc. v. The Gap, Inc., 3:22-cv-07437 (N.D. Cal.)