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Image: CFDA

Behind the scenes of the bi-annual New York Fashion Week shows, which play host to the offerings of esteemed brands like Oscar de la Renta, Marc Jacobs, and Proenza Schouler, as well an array of exciting younger names, an ugly legal battle has been underway. For a half-a-decade, an escalating fight over the rights to the “New York Fashion Week” name has pitted producer/organizer team IMG Worldwide and the Council of Fashion Designers of America (“CFDA”) against an unrelated company and its alleged quest to “cash in on years of goodwill and publicity related to the NYFW events that it has never had anything to do with.”

According to the trademark lawsuit that IMG filed in a New York federal court late last week, while it has been using the “New York Fashion Week” and NYFW trademarks consistently since 2001 as the official producer of the bi-annual fashion shows, it claims that another party – a 6-year old company called Fashion Week Inc. (“FWI”) – has taken to aggressively using the marks, as well, in connection with events held every February and September, (i.e., during NYFW).

The problem with that, according to IMG? FWI has no real connection to New York Fashion Week at all or any right to use the name.

The foundation for what would become a back-and-forth of cease and desist letters, trademark oppositions, and his-and-hers lawsuits was laid in late 2013, twelve years after IMG “acquired substantially all of the rights and assets in and to the business of owning, operating and staging a series of fashion shows … including all rights in the trademarks New York Fashion Week and NYFW.”

According to IMG’s new suit, in November 2013, more than a decade after it took over the name and operations of NYFW and teamed up with the CFDA to build up the bi-annual fashion event, the U.S. Patent and Trademark Office (“USPTO”) received an application for registration for “New York Fashion Week.” The application was not filed by IMG or the CFDA, which, at the time, had not filed any applications for any NYFW-related marks. Instead, it was lodged by a company called Fashion Week Inc. (“FWI”), one that claimed that it had been using the “New York Fashion Week” mark “in U.S. commerce as early as October 4, 2013 in connection with ‘on-line entertainment ticket agency services.’”

In connection with FWI’s application (and others it has filed since), IMG notes that “FWI falsely certified that, to the best of its knowledge, no other entity had the right to use the applied-for mark,” which is problematic, per IMG, as FWI had “actual knowledge of the famous New York Fashion Week events owned by IMG,” making the application little more than “a blatant attempt to trade off of the established prestige and renown of such famous fashion events with respect to which FWI knew it had no right or association.”

IMG goes on to argue that FWI’s trademark application is far from a one-off attempt by the company to claim rights in the “New York Fashion Week” name. In reality, the New York-headquartered events and talent giant asserts that the application was the starting point for “a continuous and serial pattern,” which has seen FWI consistently “applying to register trademarks that are the same or confusingly similar to the NYFW marks” that IMG and the CFDA had been using, and registering domain names in furtherance of an effort to “confuse consumers into believing that [it] … is affiliated with the famous New York Fashion Week events and IMG.”

More than merely confusing consumers, IMG asserts that FWI – a New York-based company in the business of hosting and selling tickets for various fashion-related events – has engaged in a “relentless and escalating” pattern of filing applications for one very specific purpose: “to unfairly trade on the fame and goodwill associated with IMG and the New York Fashion Week and NYFW marks  … with the bad-faith intention to sell any resulting trademark registrations to IMG or one of IMG’s competitors.”

In short, IMG alleges that FWI is “attempting to traffic in trademarks for profit.”

Fast forward to August 2015, a month before the start of NYFW’s the Spring/Summer 2016 shows. IMG says that it “learned that FWI was selling what purported to be tickets to IMG-sponsored New York Fashion Week events via [its] website in a manner intentionally designed to and actually causing consumers to falsely believe that they were purchasing tickets to IMG’s events.” As a result, IMG sent a cease and desist letter to FWI, “requesting that [it] stop its use of misleading language likely to cause consumers to make a false association [with] IMG’s New York Fashion Week events.”

In response to its letter, IMG claims that FWI’s founder Trisha Paravas offered to sell all of FWI’s “trademarks” and “rights,” and to “transfer sponsors” to IMG, while simultaneously “threatening litigation, delay, and bad press if IMG did not acquiesce to FWI’s demands.”

The parties seemed to make peace shortly thereafter when “Ms. Paravas called IMG’s counsel in September 2015 to indicate that she would cooperate with IMG’s requests and remove misleading language from the FWI website.” But such a peaceful co-existence did not last long, according to IMG, as over the next four months, “FWI filed four trademark applications with the USPTO for marks that are identical or confusingly similar to IMG’s NYFW marks.” And then in April 2016 and June 2016, FWI sent cease and desist letters to IMG, “demanding that IMG cease use of the New York Fashion Week and NYFW marks … based on the false assertion that FWI had superior trademark rights based upon its trademark office filings.”

(IMG argues that this is a “false assertion” because in accordance with U.S. law, trademark rights are awarded to the first party to use a mark in connection with a certain category of goods/services, not the first to file for/receive a trademark registration for the mark).

FWI escalated the matter further in June. On the heels of sending the cease and desist letters, it filed a $10 million-plus trademark suit against IMG and the CFDA, alleging that since Paravas beat IMG and the CFDA to filing a trademark applications for “New York Fashion Week” and “NYFW,” their use of the marks was running afoul of the law, and such conflicting use of the NYFW-related marks was causing FWI to lose sponsors for its own endeavors. According to its suit, FWI’s corporate sponsors included the likes of Ritz-Carlton, JP Morgan Chase and Dr. Pepper.

That case would ultimately prove to be short-lived, though. Unsurprisingly (given how trademark law works in the U.S.), 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.” On the other hand, the court held that the CFDA and IMG enjoy rights in the mark for the “broad ambit of organizing and producing fashion shows.”

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. Between December 2016 and June 2017, FWI filed twelve additional trademark applications “based on a purported use or intent to use marks identical or similar to the IMG NYFW marks.”

Faced with escalating trademark filings by FWI, IMG says that it engaged in “a number of communications with [the company] in a good-faith attempt to reach an amicable resolution of the parties’ dispute.” However, when those efforts came up short after FWI allegedly “demanded a large, unwarranted monetary payment,” IMG took its qualms to the USPTO’s Trademark Trial and Appeal Board, requesting an “extension of time to file a notice of opposition against” six of FWI’s trademark applications. While IMG has not yet filed formal oppositions, those proceedings are still underway.

Undeterred by IMG’s actions, FWI filed a trademark opposition of its own with the USPTO in early 2018, taking issue with IMG’s pending application for “NYFW THE SHOWS NEW YORK FASHION WEEK BACKSTAGE FAVORITE.” Moreover, it continued to sell tickets for NYFW events, and beginning in February 2019, started “producing and hosting” fashion shows of its own during NYFW, namely shows for designer Sherri Hill.

All the while, IMG claims that FWI “has continued to willfully use marks on its website and promotional materials to promote and sell products which unlawfully trade on the goodwill associated with IMG’s NYFW marks” and which “are designed to create a false association with IMG, and are likely to result in consumer confusion.”

And its “bad acts” have actually caused confusion among consumers, per IMG, which claims that “FWI’s mention of ‘New York Fashion Week’ on its ticket sales website has resulted in consumers emailing FWI requesting to purchase tickets to the IMG NYFW events, and caused individuals attending FWI’s events … to falsely believe it would be a fashion show produced by IMG.” (A likelihood of confusion amongst consumers is significant, as it is the central issue in a trademark infringement claim).

IMG argues that FWI’s conduct, which has been carried out even in light of its “actual notice of IMG’s priority of use [of the New York Fashion Week and NYFW trademarks],” not only gives rise to claims of trademark infringement and dilution, as well as unfair competition and violations of New York General Business Law, it “constitutes bad faith.”

With all of this in mind, IMG has asked the court to award it monetary damages in a sum to be determined at trial, and to immediately and 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.”

*The case is IMG Worldwide, LLC and International Merchandising Company, LLC, v. Fashion Week, Inc., 1:19-cv-11225 (SDNY).