A New York federal court has denied Uniqlo and Anya Hindmarch’s bid to sidestep a trademark lawsuit waged against them for allegedly co-opting another brand’s a googly eye motif. In a decision and order on Tuesday, Judge Victor Marrero of the U.S. District Court for the Southern District of New York sided with Googly Eye Cru, LLC (“GEC”), holding that the New York-based apparel and accessories company’s trademark and trade dress infringement claims can move forward despite the fast fashion giant and the British accessories brand’s efforts to get the claim dismissed.
A Bit of Background: Googly Eye Cru filed a lawsuit against Fast Retailing USA, Inc., Uniqlo USA, LLC, and A.S.H.S. Limited (d/b/a Anya Hindmarch) (the “defendants”) for trademark and trade dress infringement in May 2024 based on two federally registered trademarks for its googly eye design, which it uses on its apparel and accessories products. The suit centers on a 2023 collaboration between Uniqlo and Anya Hindmarch, which featured a “confusingly similar” googly eye design on apparel.
Uniqlo and Anya Hindmarch responded with a motion to dismiss, arguing that GEC’s designs fail to function as source-identifying trademarks in part because googly eyes are a common design found in children’s crafts and emoji. “Due to its ubiquity, this design fails to convey any meaning to consumers regarding the origin of a product,” they argued, further claiming that even if GEC’s designs are protectable trademarks, its allegations of likelihood of confusion “are implausible because [their respective uses of the google eye designs] are sufficiently different.”
Beyond that, the defendants maintained that GEC’s trade dress claim fails because “merely stating that GEC’s products include a standard, ornamental design feature does not actually identify the trade dress and does not satisfy pleading standards.” And still yet, the defendants took issue with “the inconsistencies of [GEC’s] uses” of the googly eye marks, arguing that “such varied uses are not trademark uses.”
No Immediate End in Sight
In rejecting the defendants’ motion to dismiss in an order on March 4, the court stated that GEC plausibly pleaded a valid trademark thanks to its registrations with the U.S. Patent and Trademark Office, which provide a presumption of validity. While Uniqlo and Anya Hindmarch argued that the marks at the heart of those registrations are too generic to serve as indicators of source, the court noted that this was a fact-intensive issue that could not be resolved at the pleading stage.
The court similarly refused to definitely sound off on whether those marks are invalid due to GEC’s allegedly inconsistent use of googly-eyed designs. Judge Marrero said, “Because the marks still retain the same signature features – a black-and-white cartoon illustration of two eyeballs with black pupils – the inconsistency in the direction the eyes are facing is immaterial to the marks’ distinctiveness and validity at this stage.” Again, the court punted the question of “whether this alleged inconsistency results in the public’s failure to identify the mark with its source,” as this is “a question of fact and is not to be determined on a motion to dismiss.”
The court also allowed GEC’s trade dress infringement cause of action to proceed. GEC has argued that its use of googly eyes in connection with apparel designs has become an identifiable aesthetic associated with its brand. The court sided with the company, asserting that its registration with the USPTO supports a presumption of distinctiveness that trumps (for now, at least) the defendants’ claims that GEC failed to articulate the precise elements of its trade dress.
With such trademark rights in mind, the court turned to the issue of likelihood of confusion, finding that several key factors weighed in favor of GEC, including the strength of its mark, the similarity of the designs, and the competitive proximity of the products.
Although Uniqlo and Hindmarch contended that the two designs are distinct, the court found that the overall commercial impression of the parties’ marks is sufficiently similar to support a claim of confusion at this stage. Judge Marrero also rejected the defendants’ assertion that GEC failed to allege any actual consumer confusion, noting that such evidence is not necessary to survive a motion to dismiss.
What’s Next?
With the dismissal motion denied, Uniqlo and Anya Hindmarch must now formally respond to GEC’s complaint, with the case will likely move into the discovery phase, where GEC may seek internal communications, sales data, and consumer perception evidence, etc. to bolster its claims. For the defendants, the ruling is a setback in their efforts to quickly dispose of the lawsuit. While Uniqlo and Anya Hindmarch have argued that the googly eye motif is too generic to be monopolized, the court’s decision suggests that GEC has at least raised plausible claims warranting further examination.
The case is Googly Eye Cru, LLC v. Fast Retailing USA, Inc. et al., 1:24-cv-03709 (SDNY).
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