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Image: via Vogue

Vogue is at the center of an ongoing trademark fight. Advance Publications, the parent company to Vogue’s owner Condé Nast, is taking on a brand called Black Vogue, alleging that the name is a bit too similar to the name of its 125-year old marquee magazine and as a result, is likely to cause confusion amongst consumers about the whether the two are in some way affiliated, and thereby, damage its well-known and “highly acclaimed” Vogue trademarks.

After first filing suit in a New York federal court in October 2018, Advance recently amended its trademark infringement and dilution, and unfair competition complaint for a second time, realleging that while it has been using the federally-protected Vogue trademark for the past 125 years on magazines (as well as on an increasingly “wide variety of goods and services,” including but not limited to “advertising and e-commerce services, software applications for content in the field of fashion … candles … jigsaw puzzles … [and] jewelry”), Black Vogue’s founder Nareasha Willis “has very recently begun using the trademark Black Vogue in commerce, for the purposes of selling apparel.”

According to Advance’s complaint, it was first made aware of Black Vogue early last year when Willis filed a trademark application to register the name for use on an array of garments and accessories, including hoodies, baseball caps, track pants, trench coats, and swimming trunks. In its amended complaint, Advance asserts that “on November 1, 2018, after the commencement of this action,” Ms. Willis “filed yet another application to register the Black Vogue mark for use … in connection with fashion-related projects, and advertising and publicity services.”

The media giant claims that Willis’ “willful disregard [for] its longstanding trademark rights in the Vogue trademark” and her “willful attempt to trade upon the goodwill that [it] has developed in its [Vogue] marks over the last 125 years” gives rise to trademark infringement and dilution, and unfair competition. It has asked the court to order Willis to immediately and permanently cease all use of the “Black Vogue” trademark and any similar trademarks, domain names, and “advertising keywords or metatags to promote any product,” and bar her “from using the Black Vogue mark and any other confusingly similar mark or domain name, reproduction or colorable imitation of the Vogue trademark in connection with apparel of any kind; fashion-related projects of any kind, including any advertising, promotions or publicity.”

Willis’ sweatshirts

Willis has since filed a formal response to Advance’s second amended complaint, denying the majority of its allegations, and asserting that she and her company Avenue N have “ceased using the Black Vogue mark for commercial purposes” since informing Advance counsel that they would stop such use on July 2, 2018. The answer further asserts that Willis’ mark “does not mirror [Advance’s] Vogue trademark,” and that Advance “has suffered no damage as a result of Willis’ conduct.”

Still yet, Willis’ counsel asserts in the answer that despite Advance’s claims, “Willis and [her company] did not need authorization from [Advance] to use the Black Vogue mark,” but received it, nonetheless, albeit indirectly when its publication Teen Vogue published “articles about Defendants’ use of Black Vogue and positively promoted [her] use of Black Vogue.”

It turns out, Advance-owned Teen Vogue ran a glowing story on Willis in May 2018, stating that “at just 25-years-old, Nareasha launched her fashion brand Black Vogue to present an alternative, more inclusive, fashion image.” At the time of the brand’s launch, “Nareasha felt that mainstream platforms were not doing enough to properly highlight the positive contributions of black people in fashion,” an industry that continues to be shrouded in racism – from the runway to the helm of big-name brands.

In addition to denying Advance’s claims, Willis’ counsel asserts a number of affirmative defenses, arguing, among other things, that Willis and her company “have not infringed and are not infringing any valid and enforceable trademark rights of [Advance],” that Advance’s claims “are barred due to [its] acquiescence” (as tied to its publication of an article about Willis and her products), and that they “have acted in good faith and had reasonable grounds for believing that their conduct did not violate any law and, in fact, [their] conduct did not violate any law.”

*The case is Advance Magazine Publishers, Inc. v. Nareasha D. Willis, 1:18-cv-8912 (SDNY).