In the midst of the annual Major League Baseball All-Star Game in July 2017, New Era rolled out a collaboration specifically for the occasion. The well-known sportswear company – which has sold tens of millions of baseball hats since its founding in 1920 – enlisted the help of designer Jerry Lorenzo, the designer behind buzzy Los Angeles-based brand Fear of God, and the two launched a collection of hats and other products bearing the New Era and Fear of God names, and debuted them in connection with the All-Star Gam, which took place at Marlins Park baseball stadium in sunny Miami.
The collab’s wares would go on the be featured in streetwear publications; the hats would find homes on resale sites for multiples of the initial retail price tags, and would appear on celebrities like Justin Bieber. They would also land New Era on the receiving end of a lawsuit filed by a college student in Massachusetts. In a May 2018 lawsuit, Averil Hilton argued that the Buffalo, New York-headquartered company had infringed the trademark of her brand – a religious streetwear brand called GOD’S ERA – when it teamed up with Fear of God.
By “incorporating the term GOD into the commercial impression of the NEW ERA trademark” and using it “in connection with the sale of apparel” two years after she first began using the GOD’S ERA trademark for her sale of apparel that combines the “streetwear of urban youth culture together with an unabashed love and passion for God and Christianity,” Hilton asserted that New Era was “likely to cause confusion and deceive consumers as to the origin, sponsorship, or approval of [New Era’s] products.” In other words: the hat company was engaging in trademark infringement.
More than that, Hilton argued in the complaint that she filed in a Massachusetts federal court that New Era was “causing an adverse commercial impact upon [her brand] and intending to deliberately push [her] out of the casual streetwear market by flooding the market with advertising and promotion of [its own] infringing trademark and apparel.” As a result, she asked the court to intervene and to stop New Era from (allegedly) infringing her mark any further.
As Hilton’s suit would reveal, a trademark-centric squabble had been underway for more than a year before Hilton filed suit. As Hilton set out in her complaint, the parties had been facing off before the U.S. Patent and Trademark Office (“USPTO”) ever since New Era had formally opposed the trademark application for registration that she had filed for her brand’s logo, which consists of the word “GOD’S” in all capital letters positioned above the word “ERA” and two elongated dashes.
According to New Era’s opposition, the registration of Hilton’s “GOD’S ERA” mark should be blocked because it would “cause a likelihood of consumer confusion, mistake, or deception between the ‘God’s Era’ mark and [an array of New Era’s federally registered] trademarks,” which Hilton denies given “the prominence of the word ‘GOD’ in the commercial impression of [her] mark,” thereby, clearly distinguishing it from New Era’s many trademarks for its name.
Just about “three months after New Era opposed the registration of [Hilton’s] ‘GOD’S ERA’ mark” in March 2017, Hilton says that the brand released its Fear of God collaboration, which prompted her to file suit against New Era (Fear of God was not named as a defendant in the case) on the basis of common law trademark infringement (as opposed to a federal claim, as Hilton’s application is still pending before the USPTO), as well as unfair competition and false designation of origin.
Now, almost 2 years later, New Era has landed a win in the case, with a federal judge in Massachusetts determining that Hilton lacks the necessary rights in the “GOD’S ERA” trademark to successfully wage an infringement fight against New Era.
In a memorandum and order dated March 31, Judge Indira Talwani of the U.S.District Court for the District of Massachusetts sided with New Era, holding that “because [Hilton’s] GOD’S ERA trademark was not registered [with the USPTO], the court must determine whether and to what extent the GOD’s ERA mark was entitled to common law trademark protection at the time of the alleged infringement.” (Unlike a federal registration, which is enforceable on a nation-wide basis (even if the mark is not used in every state or city), common law rights are generally only enforceable in the geographic regions where the trademark owner can show that he/she is actually using the mark).
Establishing that the test for determining common law rights “is whether the party’s mark is sufficiently known [in a specific jurisdiction], or whether its sales there are of sufficient volume, to create a likelihood of confusion among consumers, should a second user enter the same territory,” Judge Talwani found that Hilton’s brand does not meet the standard in connection with New Era’s allegedly infringing use.
“God’s Era produced receipts totaling $235 for [nine total] sales … [for the period of time] from its founding in March 2015 through the [period of alleged infringement of the] July 2017 All-Star Game,” according to the court, which also stated that “as of March 26, 2018, God’s Era had made no sales ‘in interstate commerce.’”All of those sales “were made in person by Ms. Hilton in the greater Boston area.”
As a result, while Hilton “had acquired exclusive rights to the use of the GOD’S ERA mark in the greater Boston area, those rights cannot be found to extend to Miami, Florida, where [New Era’s Fear of God] caps were sold and the bags bearing the [allegedly infringing] trademark were distributed.” Similarly, the court stated that such trademark rights could not “be found to extend to Los Angeles, California, where [New Era] sent one shipment of caps to Fear of God.”
“Because [Hilton] has not established that the GOD’S ERA mark was protected in the geographic regions where the products bearing the [allegedly infringing] mark were sold during 2017, it has not established the possibility of infringement on the part of [New Era],” the judge stated.
Without a finding of exclusive rights, the court did not consider the question of “whether use of the [allegedly infringing] mark presents ‘a likelihood of confounding an appreciable number of reasonably prudent purchasers exercising ordinary care.’”
The court also sided with New Era in connection with Hilton’s unfair competitionclaims “for the same reasons.”
While the parties’ lawsuit may be out of the way, the trademark opposition proceedings are still underway before the USPTO’s Trademark Trial and Appeal Board.
*The case is God’s Era v. New Era Cap Co., Inc, 1:18-cv-11065 (D. Mass.).