Rodarte, fresh from a stint on the Paris Fashion Week calendar, sent models in ruffles and metallic frocks down a misty runway in the New York City Marble Cemetery. Proenza Schouler, also recently back from a decampment to the City of Lights, showed a collection of reworked denim, complete with some of the biggest bags we have seen on the runway in recent memory. Still yet, Raf Simons, not yet two years into his tenure at Calvin Klein, did his best take on a mix of Jaws references and Americana wares.
While New York-based brands were busy sending their Spring/Summer 2019 collections down the runway, there was something else underway behind the scenes: a fight over the rights in New York Fashion Week name.
The Council of Fashion Designers of America (“CFDA”), a New York-based trade organization for American designers and WME-IMG, the media giant and long-time producer of New York Fashion Week, have been embroiled in a battle for the name of the bi-annual fashion event that they have pioneered for years. Since its founding in 1962, the CFDA has organized semi-annual Fashion Week events, while WME-IMG has been – for over a decade – responsible for the official fashion week venues.
On the opposite end of this feud is Fashion Week, Inc. The unrelated New York-based company, which was founded in late 2013 by entrepreneur Trisha Paravas, says it is in the business of “extending the exclusive runway show access to the consumers, building connections between fashion designers and clientele.”
The parties’ fight began in November 2013 when Fashion Week, Inc. filed an application to register the “New York Fashion Week” trademark with the U.S. Patent and Trademark Office (“USPTO”) for use in connection with “on-line entertainment ticket agency services.”
Despite its actual use of the mark in commerce for decades as the official organizer of New York Fashion Week, the CFDA lacked registrations for the “New York Fashion Week” trademarks, and so, in March 2014, it filed to register the same mark for the “organization of fashion shows for commercial purposes, namely, scheduling and administration of fashion shows during two biannual periods.”
Beating the CFDA to the punch (even though trademark rights in the U.S. are granted on a first to use, not first to file, basis), Fashion Week, Inc.’s “New York Fashion Week” trademark was registered (on the Supplemental Register) in July 2014. As a result, the CFDA’s application for “New York Fashion Week” hit a roadblock in January 2015, when the USPTO held that its mark was too similar to Fashion Week, Inc.’s “New York Fashion Week” registered mark. The USPTO’s decision prompted the CFDA to initiate proceedings to invalidate Fashion Week, Inc.’s registration.
In urging the USPTO to cancel Fashion Week, Inc.’s “New York Fashion Week” mark, the CFDA alleged that it and “its predecessors-in-interest” have established rights in and to the mark “New York Fashion Week” through their continuous use of the mark in commerce for decades, “at least since 1994, which is well prior to October 4, 2013, the first use in commerce date claimed by [Fashion Week, Inc.] for the New York Fashion Week registration.” These dates are noteworthy because trademark priority – and rights – in the U.S. are based on actual use of a trademark and not registration of the mark.
Nonetheless, the CFDA was unsuccessful in its effort to have Fashion Week, Inc.’s “New York Fashion Week” trademark cancelled, with the USPTO’s Trademark Trial and Appeal Board (“TTAB”) dismissing its cancellation in February 2016, just over a year after it was filed.
All the while, in June 2016, Fashion Week, Inc. filed a $10 million lawsuit in a New York federal court, alleging that the CFDA and WME-IMG were infringing its “New York Fashion Week” trademark.
That case was short lived. Fashion Week, Inc. filed to voluntary dismiss the case just 2 months later, shortly after the court handed a preliminary win to the CFDA and IMG, holding that while Fashion Week, Inc. 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 WME-IMG enjoy rights in the mark for the “broad ambit of organizing and producing fashion shows.”
In refusing to force the CFDA and IMG to stop using the New York Fashion Week mark, which is what Fashion Week, Inc. was seeking, the court held that, among other deficiencies, Fashion Week, Inc. “failed to show actual irreparable harm” as a result of the CFDA and WME-IMG’s use.
But this fight is far from over – and in fact, appears to only be heating up. In May, Fashion Week, Inc. filed an opposition, asking the TTAB to shut down an application that IMG filed in March 2017 for a trademark that consists of “the words ‘NEW YORK FASHION WEEK’ and ‘BACKSTAGE FAVORITE’ separated by periods and forming a circle with the words ‘NYFW THE SHOWS’ in the center,” which IMG intends to use on “mascara and eyeliner.”
Fashion Week, Inc. alleges that the proposed registration is too similar to its existing registration for “NYFW” for use on “Coats; Footwear; Hats; Headwear; Jackets and socks; Pants; Shirts; Shorts; Sweaters; and Sweatshirts.”
If registered, IMG’s trademark will, according to Fashion Week, Inc., “cause confusion as to the source and sponsorship of the goods” since Fashion Week, Inc. maintains rights in “family of NYFW and New York Fashion Week marks” and since “clothing and cosmetics are intricately linked, and most major brands have manufacturing or licensing programs that encompass both.”
IMG responded to Fashion Week, Inc.’s opposition, stating that “the term New York Fashion Week and its acronym, NYFW, have been associated with [IMG] … since at least 2001, long prior to [Fashion Week, Inc.’s] adoption or alleged use of the [NYFW] marks, and long before [Fashion Week, Inc.] filed any trademark applications for the [NYFW] marks for any goods or services.” As a result, IMG correctly asserts that it “has superior rights to [Fashion Week, Inc.] with respect to New York Fashion Week, NYFW, NYFW The Shows, and related marks.”
But more than that, IMG claims that Fashion Week, Inc. should not prevail because it is acting unethically in connection with its trademark activities. According to IMG, “Prior to filing trademark applications for the disputed marks, [Fashion Week, Inc.] had full knowledge of IMG’s prior rights in the famous New York Fashion Week and NYFW marks.”
With that in mind, Fashion Week, Inc. “misrepresented [its] knowledge of IMG’s prior rights in the marks” and filed trademark applications in order to “extract a monetary payment from IMG in exchange for transfer of ownership of the resulting registrations.” This is something that Fashion Week, Inc.’s founder and CEO Trisha Paravas has since denied in a declaration filed with the TTAB, alleging that counsel for IMG “threatened” and attempted to “coerce” her in furtherance of a settlement.
IMG goes on to set forth claims of its own against Fashion Week, Inc., arguing that, in reality, it is Fashion Week, Inc. that is in the wrong and that its New York Fashion Week trademarks are “identical or nearly identical and confusingly similar in appearance, sound and meaning, to the IMG NYFW marks” and that it is IMG that is suffering harm, not the other way around.
In short: While the Spring/Summer 2019 fashion shows have since moved to London, the right for rights in the NYFW name is still very much underway.