image: Vogue

image: Vogue

Vogue magazine’s parent company is taking on a Taiwanese jewelry company, which has filed to register “Legend Vogue” as a trademark in the U.S. According to Advance Magazine Publishers Inc.’s lawsuit, which was filed early this week in the U.S. District Court for the Central District of New York, a federal court in Manhattan, Legend Effects’ proposed trademark “is likely to cause confusion in the marketplace [and] will cause irreparable harm” to the Vogue brand.

Advance’s complaint states that Vogue “adopted and [has] continuously used the VOGUE mark as the title of a fashion magazine and internet site [in connection with] the nation’s most widely recognized and revered fashion publication. As a result of its longstanding and continuous use of VOGUE for a wide range of goods and services, [Vogue’s] trademark has acquired substantial goodwill and reputation and has become famous.”

Moreover, Advance claims that Legend Effects’ attempt to “register and use [the Legend Vogue] mark will falsely suggest an association with or approval by [Vogue] of [Legend Effects’] goods and services and will inevitably cause confusion in the marketplace.”

With this in mind, Vogue’s parent wants to court to quash Legend Vogue’s pending trademark application and bar the company from using the “Vogue” mark in connection with its goods in the U.S., including enamel bracelets emblazoned with the “Legend Vogue” name, and/or “LVG” logo. At least one if the bracelets is being sold under the “Vogue” style name.

The lawsuit comes after Advance filed a Notice of Opposition with the U.S. Patent and Trademark Office (“USPTO”)’s Trademark Trial and Appeal Board in September 2016, in which it set forth similar claims.

(Note: Before a trademark may be registered with the USPTO, several requirements must be satisfied. For instance, the mark must be published for opposition in the Official Gazette, a weekly publication of the USPTO. After the mark is published, any party who believes it may be damaged by registration of the mark has thirty days from the publication date to file either an opposition to registration or a request to extend the time to oppose. If no opposition is filed or if an opposition is unsuccessful, the application enters the next stage of the registration process).

In response to Advance’s opposition, Legend Effects’ counsel responded by setting forth five defenses, including one that argues that Vogue’s trademark registrations “are invalid,” and requesting that Advance’s opposition be dismissed as a result.

Interestingly, Advance was dealt a blow in connection with its “Vogue” trademark in a relatively recent, unrelated matter. Early this year, the Bombay High Court dismissed a trademark infringement lawsuit that Advance filed against Just Lifestyle Pvt. Ltd., an Indian brand that owns the watch, jewelry, and fragrance licenses to an array of fashion brands, such as Calvin Klein, Diesel, DKNY, and Paco Rabbane, in India. Advance argued that Just Lifestyle’s use of the name “JUST IN VOGUE” in connection with retail stores and sales services was in blatant violation of its Vogue trademarks.

Siding with Just Lifestyle, the court held that the “Vogue” trademark is little more than an ordinary, descriptive word that means “in fashion.” As such, the court found that Just Lifestyle, as a retailer of fashion goods, is entitled to describe their stores as an outlet which deals in fashionable or trendy goods which are “in vogue.” If that line of reasoning – which Legend Effects is likely referring to with its claim that Vogue’s trademark are invalid – permeates U.S. courts, it could prove damning for Advance and Vogue.