It is a shame to say but designer Jeremy Scott has swiftly been losing a battle in the court of public opinion regarding his level of actual creativity. In the past several years alone, he has been named in two very public copyright infringement lawsuits in connection with his designs. And when the American designer, who moonlights as creative director of Italian design house Moschino, is not being hauled into court on copyright infringement grounds, his designs are often being viewed as little more than repurposed versions of others’ designs and logos. Remember that McDonalds, Hersey’s, etc. collection for Moschino? So, with all of this in mind, it is difficult – for at least the legally minded of us – to look at Scott’s collections without an analyzing eye. Enter: his new fragrance for Moschino.

As you may recall, Scott’s Spring/Summer 2016 collection for Moschino included his usual take on a number of universally famous brands, Windex being one of them. I initially brushed this one off, considering that Scott was careful not to include any actual “Windex” or S.C. Johnson (the owner of Windex) terminology, but the release of a fragrance fashioned upon this product has taken it a step further and may prove problematic.

THE LEGAL BACKGROUND

Patent Protection

Windex hardly needs an introduction, but nevertheless, it is a glass and hard-surface cleaner that has been manufactured since 1933. The formula of the original Windex, which is a light, translucent shade of blue, was patented early on, as have the many related Windex products that have followed over the years.

More importantly for us, Reckitt and Colman, Inc. (which S.C. Johnson acquired) filed to register the shape of the Windex spray bottle as a design patent with the U.S. Patent and Trademark Office in 1998 and were subsequently issued the patent in 2000. However, that registration expired in 2014 (as the design patent protection lasted for 14 years). It is also worth noting that like trademarks, design patents are issued in accordance with the class of goods for which the design is used. For Windex, this was D9, which extends to “Packages and Containers for Goods.”

Trademark Protection

In terms of trademark, the word, “Windex,” received federal trademark protection in 1968. Note that while some sources suggest that the Windex name has been genericized (and thus, does not enjoy federal trademark protection), according to the U.S. Patent and Trademark Office’s records, such protection still exists.

There is likely also common law trademark protection that extends to the Windex logo and related imagery (think: the red “Windex” name positioned on the blue oval-ish shaped background with the word “Original” underneath in white lettering). If the trade dress is unregistered, common law provides protection for “any word, term, name, symbol, or device, or any combination thereof” used “on or in connection with any goods or services, or any container for goods.” 

In either case, others are prohibited from using the Windex trademark (or a similar trademark) on their products – as long as those products fall within the classes of goods which S.C. Johnson uses this specific mark – without authorization from S.C. Johnson if that use will cause a likelihood of confusion amongst consumers. The “likelihood of confusion” standard is the key inquiry in trademark infringement actions. In short: a party cannot use another’s trademark (or one that is similar) if it is likely to cause confusion or mistake amongst consumers. This is not as straightforward as it sounds, though. Such “confusion” includes the likelihood that consumers will believe that the original trademark holder (Windex, here) is sponsoring, endorsing, or is somehow affiliated with the other party (Moschino/Scott) or its products.

Trade Dress Protection

Trademark rights focus on one aspect of a product’s image — the trademark itself, which often comes in the form of a logo or name, etc. Trade dress, on the other hand, focuses on the total image of the product. While Windex does not have federal trade dress protection – a subset of trademark law that extends to the overall appearance of a product and/or its packaging that indicates or identifies the source of the product and distinguishes it from those of others – some sources suggest that such protection does, in fact, exist by way of common law protection. Website, trademarkauthority.com, for instance, suggests that much like one of the most well known instances of trade dress, the shape of the Coca-Cola bottle, the Windex also enjoys trade dress protection in connection with the shape of its bottle, in the class(es) in which it is associated. 

Not as much of a slam-dunk as federal protection, common law trademark and trade dress protection is limited in terms of geographical scope. In other words, the trademark or trade dress holder can only initiate actions for infringement in geographic areas where the product at issue is used. For instance, if the cleaning product is sold under the name Windex and in the bottle shape at issue in California only, the trademark/trade dress rights to that name exist only in California. Lucky for Windex, its name and bottle are used uniformly in the entire United States. Moreover, considering that Amazon opened five fulfillment centers in Poland and the Czech Republic in 2014, chances are, you can get your hands on some Windex just about anywhere in the world at this point.

That’s bad news for Moschino, as it would potentially allow S.C. Johnson to sue over the Windex trade dress just about anywhere that Moschino is selling its perfume.

Assuming that some form of trade dress protection exists for the Windex bottle, it would likely extend, in part, to: the configuration of a spray bottle, including an oblong, contoured body; screw threading at the top of the bottleneck; two small contoured notches on one side of the bottle, right below the neck base; and a four-sided base. And it would extend to the specific goods in the applicable class.

Trademark and Trade Dress Dilution

And still yet, there is the possibility of dilution claims. Dilution differs from normal trademark and trade dress infringement in that there is no need to prove a likelihood of confusion to protect a mark, nor is there any need to show competition between the goods of the plaintiff and the defendant. Therefore, it is possible to use a dilution cause of action against users of the same mark even when the defendant’s goods and services bear no relation to the goods or services of the famous mark. Essentially, all that is required is that use of a “famous” mark by a third party causes the dilution of the “distinctive quality” of the mark. 

WINDEX: A PROBLEMATIC PRODUCT FOR MOSCHINO

With all of this in mind, just how legal is Moschino’s new fragrance and the lookalike garments and the phone case and the bags, etc.?

The Shirts, iPhone Case, Bags, etc., and a Case for Trademark Infringement and Dilution

Problematic – for Moschino – in the case at hand is the frequency with which the word “Windex” is used in connection with Moschino’s goods. Such usage by journalists, show-goers, and individuals on social media, among others, suggests that consumers have identified a similarity between the Windex trademarks (both the name and the Red/blue imagery as described above) and those utilized by Moschino. Remember, as indicated above (and as derived from the Lanham Act, the federal trademark law), the potentially infringing party does not have to use the exact same mark to infringe the trademark holder’s mark. The use of a similar mark will suffice.

Here are some examples of such use (and note: I am in no way faulting these publications for using the word Windex, I am merely using these as potential examples of consumer confusion):

· Yahoo Style posted an article, entitled, “$95 Windex iPhone Case Sells Out Immediately After Car-Themed Moschino Show;”

· Racked’s article was titled, “Moschino’s $95 Windex iPhone Case Is Already Sold Out;” Mashable wrote, “This Windex-shaped iPhone case is $95 and already sold out;”

· The New York Post recently ran an article about the Moschino fragrance with the title, “Use this ‘Windex’ to seduce men;”

· The New York Daily News aptly noted, “Moschino’s new fragrance looks like a bottle of Windex;” and

· Just Jared noted in connection with the Italian design house’s show, “Bella Hadid Carries A Giant Windex Prop For Moschino.”

As you can see from the handful of articles above, the frequency with which the Windex trademark is used in connection with the Moschino Spring/Summer 2016 collection is not few and far between. And this is significant, as Windex would certainly print out each and every one of these articles, attach them to its trademark/trade dress infringement and dilution lawsuit, and scream: “Consumer Confusion!” In fact, such overwhelming usage of the Windex trademark in connection with the Moschino collection would likely fit into the widely accepted test for establishing a likelihood of confusion.

The legally-minded amongst us will know these as the Polaroid Factors, as derived from Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961). In short, this case gave us the following factors that a plaintiff must show (to some extent) in order to prove that there is a likelihood of confusion and thus, trademark infringement.

These factors are as follows: Strength of the senior user’s mark; Similarity of the marks; Similarity of the products or services; Likelihood that the senior user will bridge the gap; The junior user’s intent in adopting the mark; ** Evidence of actual confusion; Sophistication of the buyers; Quality of the junior user’s products or services; and Related products and services.

While I will spare you an analysis of these factors, it is worth noting that the many mentions of the Windex trademark in connection with the Moschino collection are likely evidence of confusion amongst consumers, and suggest that Windex has a very real case here.

What about dilution? It is worth noting that dilution is a very possible claim here – and in fact, probably even more likely than infringement, as Windex and Moschino are selling two very different types of goods. Windex is selling cleaning supplies. Moschino is selling perfume. Because Windex’s trademark rights – registered and common law – only apply to the classes in which they are used for infringement purposes, trademark dilution is a very good solution, as it allows a trademark holder to file suit in connection with the use of its mark on non-competing goods, something for which infringement claims provide little help.

The Fragrance and Claims of Patent and Trade Dress Infringement/Dilution

Now, let’s tackle the shape of the fragrance bottle. Given the fact that the shape of the bottle is in a design patent class that covers “Packages and Containers for Goods,” it is clearly within the same spectrum as the one in which Moschino is operating. This would certainly prove an easy way to catch Moschino/Scott in an infringing situation, the problem is: The patent is expired.

We are not out of luck, however, because even once a patent expires, a party may still rely on trade dress protection, which, if used in commerce (and is not subject to genericization), could potentially last forever. As indicated above, S.C. Johnson does not have federal trade dress protection in connection with the shape of the Windex bottle, but it can likely claim common law trade dress protection.

Because Moschino has replicated the shape of the Windex bottle almost exactly for its fragrance bottle, there is a chance that S.C. Johnson could file suit for trade dress infringement, but there is something standing in its way. It probably cannot get around the fact that it uses the bottle for cleaning solution and Moschino is using it for a fragrance (who are two different classes of goods according to trademark classification).

Having said that, a dilution claim is likely more apt here. In claiming dilution, the owner of a famous trademark, such as Windex, may file suit alleging that its mark is being used by another on non-competing goods and thereby, diluting the distinctiveness of it and its ability to serve as a source identifying tool. Due to the differing goods in such a case, a showing of likelihood of confusion is not required, and thus, may be ideal here. 

Either claim seems somewhat plausible but not without its own difficulties. 

WHY THIS CASE WILL NEVER BE A CASE

Despite the aforementioned, which certainly seems to suggest that Moschino and Scott are operating outside of the scope of legality, this hypothetical case will remain just that: a hypothetical case, and the reason is quite simple.  It is arguably in Windex’s best interest to refrain from fighting.

As we noted in connection with Moschino’s Fall/Winter 2014 collection and the use of McDonalds-esque imagery (and trademarks), and as we did not note above: There’s one additional piece here and that is the business aspect of trademarks. Sure, we know all about the goals of trademark law and the need for brands to police their marks in order to prevent this valuable form of intellectual property from becoming generic, and thus, useless in terms of identifying a source of goods or services. But, what about the business of fashion, which I would argue, plays a pretty significant role here.

What we have not yet addressed is that it may not be in Windex’s best interest to file suit here, as it may actually benefit from its fashion treatment in two ways: 1 – Moschino is a luxury fashion house, and Windex is a plain old house cleaning product; the two are quite obviously on different levels, and because it is the high end brand channeling a less high end one, the damage here is arguably a lot less than if the situation were reversed. Unlike Chanel, a historic design house with high fashion image to uphold (which may, in fact, be infringed by Moschino’s “odes” in this season’s collections and in a number of other seasons prior), Windex might actually benefit from upping their image game just a bit, no? Thus, its connection to an Italian design house may not be the worst thing in terms of branding. 2 – Exposure. We have all heard that no press is bad press, and that same reasoning likely applies here. When was the last time Windex was in Vogue or Womenswear Daily or any fashion-related publication? Probably never.

So, it worthy of noting that while litigation is quite often an option when intellectual property and Jeremy Scott is involved, it is not always the best business move, and that fact alone may be what is stopping Windex from taking Moschino to court. Thoughts?