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Simply reversing the order of the letters in the word “Supreme,” slapping that made-up word on apparel, and then filing a trademark application for registration for it with the U.S. Patent and Trademark Office (“USPTO”)? That will land you on the receiving end of an opposition proceeding with VF Corp.-owned streetwear brand Supreme. That is, after all, what has played out since Ontario, Canada-based Urban Coolab Inc. filed a trademark application in May 2020 for “EMERPUS” for use on apparel and retail store services. 

In an opposition proceeding initiated in January, counsel for Supreme’s corporate entity Chapter 4 Corp. argued that Urban Coolab’s application should be blocked by the USPTO’s Trademark Trial and Appeal Board, as “EMERPUS” is not an indicator of the source of the Canadian apparel brand’s products. Instead, it is “merely [Chapter 4’s] SUPREME word mark spelled backwards” that Urban Coolab is using in an “effort to associate [its] goods and services with [Chapter 4’s] well-known SUPREME brand,” an argument that Chapter 4 bolsters by noting that Supreme has used its own mark in a similar way by adorning its coveted wares with a flipped version of its famed box logo

Speaking specifically to its “exclusive federal and common law rights for the ‘SUPREME’ marks,” for which it “owns hundreds of trademark registrations worldwide,” Chapter 4 claimed that it has used the marks “since at least as early as April 1994” when “the first Supreme retail store opened [and] offered a host of clothing, bags and related products and accessories” bearing the Supreme name and red-and-white rectangular logo. As for the “fame” associated with the “SUPREME” trademarks, Chapter 4 pointed to: (1) its “consistent and exclusive of use of the [marks] over nearly the past 25 years in the United States and throughout the world, including in connection with apparel, bags, accessories, skateboard decks, streetwear-related products and other merchandise; (2) unsolicited media attention about the Supreme brand; and (3) the worldwide sales of Supreme branded goods in the hundreds of millions of U.S. dollars.” 

With the foregoing in mind and due to Chapter 4’s “extensive use of the SUPREME marks” – from its word mark to its red-and-white box logo, Chapter 4 alleged that these marks have become “famous and are an asset of substantial value to [Chapter 4] as a symbol of [the Supreme brand], its quality goods and services, and goodwill.” As such, the company has argued that if Urban Coolab is “permitted to obtain a registration for [the EMERPUS] mark,” that would “cause damage and injury to [Supreme’s] business reputation and goodwill and would injure and impair [its] senior rights in its ‘SUPREME’ marks.” 

In addition to “dilut[ing] the distinctive quality of the SUPREME marks, which have been famous since prior to the filing date of [Urban Coolab’s] application or any alleged date of use in commerce of [Urban Coolab’s] mark,” given that the “EMERPUS” mark “so resembles” Chapter 4’s SUPREME marks, the group declared that it would likely cause confusion amongst consumers. In other words, Urban Coolab’s use of the “EMERPUS” mark on apparel and accessories will “generate the erroneous impression that [its] goods and services originate with [Supreme] or that [its] goods and services are authorized, licensed or endorsed by, or are connected or associated in some way with [Chapter 4] or the SUPREME marks” when they are not. 

As such, Chapter 4 asserted that its opposition should be sustained, and that registration of Urban Coolab’s mark should be denied. 

In the answer that it filed last month, Urban Coolab pushed back against Chapter 4’s assertions, denying that the streetwear company and its corporate arm would be damaged by the registration of the “EMERPUS” mark, and also denying Chapter 4’s claim that it is using the “EMERPUS” mark to piggyback on the appeal of the Supreme brand, despite the similar marks and the similar stylizations of the marks. (While Urban Coolab’s application states that its “mark consists of standard characters without claim to any particular font style, size, or color,” it wares, nonetheless, feature the word “EMERPUS” in white block lettering inside a rectangular red box, thereby, mirroring the look of Supreme’s box logo). The brand also sets out a number of defenses, asserting that, among other things, “there is no likelihood of confusion, mistake or deception” at play. 

In preliminarily arguing its case, Urban Coolab requested that the Trademark Trial and Appeal Board (“TTAB”) dismiss Chapter 4’s opposition with prejudice, and grant it “any and all such further relief as may be appropriate.”    

Fast forward to March 1, and Chapter 4 has asked the trademark body to temporarily put the proceedings on hold, telling the TTAB that “the parties are actively engaged in negotiations for the settlement of this matter,” and has requested that “this proceeding be suspended for 30 days to allow the parties to continue their settlement efforts.” In a motion on the same day, the TTAB granted Chapter 4’s motion, suspending the matter “subject to the right of either party to request resumption at any time.” 

UPDATED (April 7, 2021): Following Chapter 4’s March 1 motion to suspend proceedings on the basis that “the parties are actively engaged in negotiations for the settlement of this matter,” counsel for Urban Coolab filed to abandon its application to register EREMPUS on April 6. Sustaining the opposition and refusing the application, the TTAB terminated the action on April 7.