In 2015, college student Averil Hilton decided to launch a brand. Wanting to combine “the streetwear of urban youth culture with [her] unabashed love and passion for God and Christianity,” Hilton “conceived of and developed” her brand, GOD’S ERA, and began designing and selling “t-shirts and sweatshirts for men, women and children,” to friends, family, members of her church, and the general public at gospel concerts where she ran a merchandise booth.
Upon creating a logo for her brand, which consists of the word “GOD’S” in all capital letters positioned above the word “ERA” and two elongated dashes, Hilton filed an application for registration with the U.S. Patent and Trademark Office (“USPTO”) in October 2016, seeking exclusive rights in the mark for use on garments and accessories. After filing the application, Hilton claims that she was “shocked to learn that, on March 22, 2017, [New Era] opposed the registration of [her] mark by filing a Notice of Opposition in the USPTO.”
As New Era argued in its opposition filing, the registration of Hilton’s “GOD’S ERA” mark “will 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.
The two parties’ issues did not stop there, though, as in June 2017 – or about “three months after New Era opposed the registration of [Hilton’s] ‘GOD’S ERA’ mark and two years after [Hilton’s] first use of the ‘GOD’S ERA’ mark – New Era “began selling apparel under a combination of the marks NEW ERA and FEAR OF GOD” in furtherance of a collaboration with Fear of God, the buzzy Los Angeles-based brand founded by designer Jerry Lorenzo.
Prompted to file a trademark infringement suit against New Era in a Massachusetts federal court in May 2018, Hilton asserted that it is New Era – a “large multinational corporation perhaps best known among aficionados of baseball caps as the official on-field cap for Major League Baseball” – that is in the wrong.
According to Hilton’s complaint, New Era’s “incorporation of the term GOD into the commercial impression of the NEW ERA trademark when used in connection with the sale of apparel” is “likely to cause confusion and deceive consumers as to the origin, sponsorship, or approval of [New Era’s] products.” In particular, she claims that such use will “create the false and misleading impression that [New Era’s] goods are associated with [her brand],” thereby, giving rise to claims of common law trademark infringement (as Hilton’s application is still pending before the USPTO), unfair competition, and false designation of origin.
By “intentionally copying the style of [her] GOD’S ERA brand,” New Balance is not only standing to confuse consumers, Hilton argues, it is “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 such, Hilton has asked the court to award her permanent injunction enjoining New Era from continuing to engage in such allegedly infringing and unfair behavior, to award her monetary damages, and to order New Balance to deliver to her any products, and “all packaging and any printed material, including advertising materials and point-of-sale displays,” bearing the allegedly infringing trademark so that those things can be destroyed.
*The case is God’s Era v. New Era Cap Co., Inc, 1:18-cv-11065 (D. Mass.).