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Image: Fashion Week, Inc.

New York Governor Andrew Cuomo gave New York Fashion Week the green-light, asserting in an August 25 statement that the Spring/Summer 2021 runway shows of New York-based brands are a-go, albeit “in strict compliance with New York State health and safety guidelines, including outdoor events capped at 50 persons and indoor events at 50 percent capacity and no spectators.” With only “a handful of exceptions, all of the presentations on the CFDA’s official lineup will be digital,” according to Vogue. 

As brands like Jason Wu, Carolina Herrera, Eckhaus Latta, and Tom Ford prepare to show their S/S 2021 collections in accordance with the CFDA’s official schedule (no shortage of big names – from Marc Jacobs and Oscar de la Renta to Proenza Schouler and the Olsens’ label The Row – are notably absent from the official calendar), an ugly and ever-escalating battle is underway behind the scenes, one that essentially asks: Who has rights in the “New York Fashion Week” name? 

For the past several years, a fight over the rights in various New York Fashion Week-related trademarks has pitted IMG – which “purchased the rights [to NYFW] from the CFDA and its related company in 2001” – against Fashion Week, Inc. (“FWI”), an unrelated entity that is in the business of hosting consumer-facing fashion shows that it promotes using the “NYFW” and New York Fashion Week trademarks. 

With such similar uses of the NYFW marks at play by IMG and FWI, the parties have engaged in a years-long back-and-forth of cease and desist letters, trademark opposition and cancellation proceedings, and his-and-hers lawsuits, all of which ultimately culminated in IMG filing suit against FWI and its founder Trisha Paravas in December 2019. 

A “Relentless and Escalating Campaign”

In its suit, which is currently underway before the U.S. District Court for the Southern District of New York, IMG alleges that beginning in 2013, decades after its predecessors-in-interest first began using the “New York Fashion Week” trademarks, FWI started using staging and advertising runway shows on a bi-annual basis, using the “NYFW” and “New York Fashion Week” trademarks in connection with them. 

All the while, IMG claims that the unrelated company was filing “bad faith” trademark applications for those marks with the U.S. Patent and Trademark Office (“USPTO”) in furtherance of “a relentless and escalating campaign with the intention of cashing in on the decades of goodwill and publicity related to the NYFW events that it has never had anything to do with.”

IMG – which describes itself as a “global leader in entertainment, sports and fashion” – goes on the assert in its complaint that it attempted to settle the matter by sending a letter to FWI in August 2016, requesting that the company stop making use of the NYFW marks since such use was “likely to cause consumers to make a false association between FWI and IMG’s NEW YORK FASHION WEEK events.” Such efforts were fruitless, however, as in response to its letter, IMG alleges that FWI’s founder offered to stop using the marks by “selling the ‘trademarks’ and ‘rights’ … to IMG in exchange for payment.” More than that, IMG alleges that in addition to refusing to cease such use without payment from IMG, Paravas “also threatened litigation, delay, and bad press if IMG did not acquiesce to FWI’s demands.” 

After that, the parties’ dealings continued to go downhill, per IMG, with FWI continuing to not only use the NYFW marks but to file new applications for additional NYFW marks, eventually prompting IMG to file suit late last year, setting forth a mix of federal and state law trademark infringement and dilution, false designation of origin, and unfair competition claims. 

The entertainment giant is seeking monetary damages of a sum to be determined at trial, and injunctive relief to permanently bar FWI from using any of the disputed NYFW marks “in connection with the manufacturing, importing, advertising, marketing, promoting, supplying, distributing, offering for sale or selling any products or services worldwide.”

Merely a “Generic” Term? 

In its formal response to IMG’s suit in January, FWI denied most of IMG’s claims – which it calls “false and defamatory” – and asserted a number of defenses and four claims of its own. In its 44-page answer, FWI argued that despite IMG’s arguments to the contrary, it is not causing “consumer deception or confusion” as a result of its use of a number of trademarks, including NYFW and New York Fashion Week, in connection with the events it holds during the bi-annual fashion week, including fashion shows, such as those for dress designer Sherri Hill. 

In reality, the 7-year old company asserts that if there is any confusion as to the source/nature of its offerings and events, that confusion “has been caused by [IMG’s] wrongful use of [FWI’s] trademarks,” and not the other way around. 

As it turns out, FWI actually beat IMG and the CFDA to the punch in filing and receiving registrations from USPTO for a number of NYFW-related marks. Additionally, FWI claims that it began using the “New York Fashion Week” and NYFW marks long before IMG because “IMG’s shows were called ‘Mercedes Benz Fashion Week’ and ‘MBFW’ for a decade until 2015, [at which point] FWI’s marks were already in use.” (The date of first use is significant, as in the U.S., trademark rights are earned by being the first party to actually use a trademark, not by being the party to register the mark with the USPTO.)

Aside from merely denying IMG’s claims, FWI set out a handful of defenses, arguing that it has been using NYFW-related trademarks “since 2013 without any challenge by [IMG] until December of 2019,” which it says is “well beyond any applicable [statute of] limitations period,” thereby, barring IMG’s claims. And in addition to timing issues, FWI has argued that IMG’s lawsuit and the remedies it is seeking are precluded because of its own alleged bad acts, namely, its attempts to “misappropriate the name of an event” and engage in the “antitrust monopolizing of generic terms.”

According to FWI, an “event” – such as NYFW – “is not a trademark, nor can it be, due to the generic nature of the term.” (The NFL would certainly argue otherwise). 

Based on the “generic nature” of the New York Fashion Week name (i.e., the general use of the NYFW name to refer to a category of events from an array of companies as opposed to the services of one particular company), FWI claimed – in an argument against IMG but also presumably against itself since it maintains NYFW-specific trademark registrations – that IMG’s “misappropriated [New York Fashion Week] trademark is too weak to afford it any protection of any kind,” including the ability to stop FWI from using the name. 

The case is currently in the discovery phase, with FWI seeking documentation from the likes of the CFDA, its current and former chairs Tom Ford and Diane Von Furstenburg, and Vogue editor-in-chief Anna Wintour, among others, with a settlement conference scheduled for early October. 

An Earlier Case

Hardly the first court battle between the two, FWI filed a $10 million trademark infringement suit against IMG in June 2016 “in an attempt to stop IMG and CFDA from continuing to use the NYFW and NEW YORK FASHION WEEK marks.”  According to IMG, “The alleged basis of the lawsuit was FWI’s false claim that it owned superior rights in the marks” by virtue of the fact that it filed applications for NEW YORK FASHION WEEK, NYFW, and NYFW THE RUNWAY SHOWS with the USPTO between 2013 and 2015 (i.e., before IMG (or the CFDA) did). 

That case ultimately proved to be short-lived, though. Unsurprisingly (given that trademark law works in the U.S. operates in accordance with a first-to-use system), the U.S. District Court for the Southern District of New York refused to grant either of the initial remedies that FWI was seeking, a temporary restraining order and a preliminary injunction, holding that while FWI does have rights in the “New York Fashion Week” trademark, those rights are “limited” to “online entertainment ticket agency sales.” 

At the same time, the court held that even if the CFDA and IMG do not maintain trademark registrations for “New York Fashion Week” (and they do not), they, nonetheless, enjoy rights in the mark for the “broad ambit of organizing and producing fashion shows” as a result of their consistent use of it, which predates any uses by FWI. 

After the court denied FWI’s Motion for Preliminary Injunction and Temporary Restraining Order, the company voluntarily dismissed its lawsuit in August 2016,” but nonetheless, “pressed on with its campaign to file trademarks that mimic IMG’s NYFW marks,” per IMG. 

*The case is IMG Worldwide, LLC et al. v. Fashion Week Inc. et al. 1:19-cv-11225.