Amid a trademark opposition battle that has been quietly underway since 2021, 1661, Inc. d/b/a GOAT has named Green Goat, LLC in a new lawsuit for allegedly using a “confusingly similar” trademark on “identical and/or closely related goods and services,” and “threaten[ing] to usurp GOAT’s hard-earned goodwill” in the process. In the complaint that it lodged with the U.S. District Court for the Central District of California on March 17, GOAT alleges that the similarly named GREEN GOAT is on the hook for trademark infringement, false designation of origin, and unfair competition as a result of its use of the GREEN GOAT mark in connection with the sale of apparel and accessories, and its offering of online retail store services.
Setting the stage in its complaint, GOAT alleges that by way of the GOAT app and website, it “facilitate[s] the buying and selling, as well as authentication, of sneakers, clothing, jewelry, purses, wallets, bags, and various fashion accessory items, among other things,” and that it has experienced “runaway success,” with the GOAT app being “downloaded hundreds of thousands of times every month,” and its platform boasting “tens of millions of users around the world.” In addition to offering up other companies’ wares via its resale platform, GOAT asserts that it is in the business of “designing, marketing, and selling GOAT branded clothing and accessories” (and has been since the early 2000s via its predecessors in interest) and that its “fame and high-quality goods and services have resulted in numerous co-branding business relationships with some of the top fashion brands in the world.”
Enter Green Goat, LLC, Mario Tovar, and Eric Gates (collectively, the “defendants”), who launched a golf-centric clothing and apparel company called GREEN GOAT in 2020. Despite being aware of GOAT when they adopted this trademark because they had previously used GOAT’s platform to sell products, the defendants, nonetheless, began using a trademark that “incorporates the entirety of the GOAT mark” for their own venture.
Beyond the apparel and accessories that they are offering up via the Green Goat Golf brand, GOAT asserts that the defendants are “also using the GREEN GOAT mark and website to redirect consumers to [the site of] another company that [they] are affiliated with, Streetwear Official,” where consumers can purchase apparel from Supreme, Balenciaga, Adidas, BAPE, etc. Part of the problem, per GOAT, is that these “are brands that are also sold on [its] website, [and] indeed, not only are the brands [that the two companies are offering up] identical, but many of the products being sold are identical as well.” Moreover, Streetwear Official is also selling apparel and accessories that bear the GREEN GOAT mark, and in at least some cases, in “a further attempt to capitalize upon the GOAT brand,” they have “dropped the ‘GREEN’ portion of the GREEN GOAT mark” in their description of the products on the Streetwear Official site.
“By using GOAT’s trademark, the defendants reap the benefits of [its] reputation and goodwill based on consumer confusion, all to GOAT’s detriment,” the resale company claims, noting that in light of GOAT’s “renown, online presence, and long history of providing goods and services under the GOAT marks,” it is “understandably concerned that consumers will likely be confused and mistakenly believe that the defendants and their goods and/or services are endorsed, approved, or sponsored by, or affiliated, connected, or associated with, GOAT.”
GOAT goes on to assert that it is “just one of many victims to [the defendants’] willful violation of intellectual property rights.” They are “serial violators of intellectual property rights,” GOAT argues, pointing to their allegedly unauthorized use of the CALLAWAY mark – a mark owned by Callaway Golf Company, and Augusta National’s MASTERS mark to sell products. And in another example of their “large-scale infringement,” GOAT claims that the defendants are selling products that trade off Nike’s iconic “JUST DO IT” slogan, and have “gone the extra step of filing several applications with the USPTO to register these marks,” including “JUST BOMBED IT,” “JUST PAR’D,” “JUST BOGEY’D,” “JUST GOLF,” etc.
Still yet, GOAT contends that the issues here run deeper, as the defendants have engaged in other practices to dupe consumers, including by showing pop-ups on the GREEN GOAT website that “falsely” indicate when products are being viewed by consumers and when sales of goods occur on the site, and by “engaging in a false advertising practice known as ‘fictitious pricing’ or ‘false reference pricing’” in order to “create the perception of a bargain and mislead consumers.”
With the foregoing in mind, GOAT claims that while the defendants are using the GREEN GOAT mark to infringe its trademarks, they are also engaging in “false advertising and to deceive consumers into purchasing [their] products.” As such, GOAT sets out claims of federal and state law trademark infringement, unfair competition, and false advertising, and is seeking injunctive relief (including a bar against the defendants’ use of “any domain name that contains any of the GOAT marks (including any misspelling or variation of those marks), or any domain name that is confusingly similar to any of the GOAT marks”), and monetary damages.
Opposition Proceeding – Maybe more interesting than the lawsuit, itself, is the consolidated opposition proceeding that GOAT first waged against Green Goat, LLC in November 2021 to block a handful of its applications for registration for “GREEN GOAT” and the mark used in connection with the company’s logo (which consists of a green-hued goat) for use on apparel, golf accessories, online retail store services for apparel, etc. Likely foreshadowing claims that it will make in response to GOAT’s trademark lawsuit, Green Goat, LLC argued in the answer that it filed with the Trademark Trial and Appeal Board last year that “there is no likelihood of confusion, mistake, or deception” between its mark and those held by GOAT, and that “the word ‘Goat’ either alone or in combination with other words, designs or symbols is widely used in the marketplace by third parties in conjunction with the sale of ‘apparel’ and other similar goods in the U.S.”
Doubling-down on this point, counsel for Green Goat asserted that numerous registrations exist for marks that incorporate the word “Goat” in combination with other words or designs” for use on apparel and footwear, such as GOAT POWERED, ISLAND GOAT, LUCKY GOAT, SURFING GOAT, and GOAT BLUE, among others. In “such a crowded field,” Green Goat argued that GOAT’s marks are “incredibly weak, and cannot serve as a basis for a finding of consumer confusion against another mark, even when used on similar class of goods or services, that is not completely identical to it.”
Green Goat claims that in addition to its mark being “sufficiently distinct” from GOAT’s mark “so as not to cause confusion among consumers with regards to association, origination, or endorsement between the two,” the consumers of the parties’ products and/or services are also “sufficiently different and distinct from one another to avoid consumer confusion.” Its customers are “golfing enthusiasts,” while GOAT shoppers fall within, “as it has conceded, a ‘niche and narrow market of consumers’ known as ‘sneakerheads’ who are ‘typically millennials and Gen Xers'” and who are “extremely sophisticated about the products they seek and are also extremely discerning about such products.”
Another issue, according to Green Goat: In light of its “apparent understanding [of] the narrow scope of its marks,” GOAT has “in the past acquiesced to other marks similar to [its mark] that included the word ‘Goat’ alone or in combination with other words or designs in International Classes 025 and/or 035.” Accordingly, Green Goat asserted that registration of its mark “will neither damage nor diminish [GOAT’s] rights in the [GOAT] marks.”
A rep for Green Goat, LLC was not immediately available for comment.
The case is 1661, Inc. v. Green Goat, LLC, et al., 8:23-cv-00490 (C.D. Cal.).