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The trendiest of trends

Originally posted 2011-05-05 17:33:57. Republished by Blog Post Promoter

View from Mt. Holyoke - Thomas Cole“Green trademarks” that is. Green-themed, green-related, green to go, green for action! Well, trends aren’t just for marketers — you can find them in the media too. First, Susan Scafidi — trend-tracker extraordinaire, and, as you will see, a trend-maker too. This was on her awesomely chic blog but refers to an interview she did that was published in a Milwaukee newspaper on April 21st:

Eco-friendly fashion has escaped the confines of shapeless, formless, colorless sack dresses and ugly earth sandals to become a major fashion trend, with cutting-edge retailers like Barney’s New York shouting, “Don’t Panic! It’s Organic!” and celebrities adding their names to labels that promise sustainable, recycled, natural, biodegradable, cruelty-free, fair trade fashion fixes. With the text on some hang tags longer than an editorial in an alternative weekly and the British Advertising Standards Authority cracking down on unsustainable claims regarding “sustainable” cotton, Milwaukee Journal Sentinel reporter Lori Price asked your favorite law prof whether U.S. law offers any specific regulations regarding green clothing claims.

That should just about do it right there! But nope. Two days later, here’s the big trademark story on Ad Age:

Getting ready well in advance for today’s Earth Day events, marketers bombarded the Patent and Trademark Office last year for green-themed marks, leading to a 10% spike in trademark filings over 2006, according to a report released by the law firm Dechert.

According to the annual report “Trends in Trademarks,” filings for new trademarks last year topped 300,000, setting a record buoyed by interest in environmentalism. The previous record was 289,000 filings, set in 2000 during the internet boom.

Now that’s a trend!  Articles about eco-trademarks.

Now… “an interest in environmentalism,” eh? Let me suggest an inconvenient truth: Trademarks are about gelt. That’s what the article quoting Susan is about — the fact that there is (gasp!) no regulation over claims of “greenness” made on the stuff people sell you. As Susan says:

“The law hasn’t caught up with eco or organic, so frankly, it’s still easy to be green,” said Susan Scafidi, a visiting professor at Fordham Law School, who teaches fashion law. “So long as you are not defrauding the consumer, you can say anything, and so long as no one complains, you can do anything.”

Actually, it sounds like the law has caught up pretty well, no? At least until some legislator or interest group finds a way to catch up with it and… “buoy” some governmental “interest.”

Best of 2012: Fashionably great

Originally posted 2012-12-27 15:00:26. Republished by Blog Post Promoter

Originally posted October 25, 2012.

I had a fabulous time, if you will, as a panelist and participant in last night’s Fashion Lawyer Marketing CLE at Fordham Law School’s Fashion Law Institute.  I certainly learned far more than I taught, but of course, that makes sense, considering that I was only one-third of the panel.  Attendance was so good that people even sat in the front row!  I didn’t even see people looking at their smartphones.  (Someone said that’s because there’s no signal in the room, but that’s just crazy talk.)

Prof. Jeff Trexler, Bernice Leber, your blogger, Ted Max

Some highlights:

The fascinating and insightful Professor Jeff Trexler moderated, and first called on Bernice Leber, who besides having done everything a lawyer can do right in a career has also been the president of the New York State Bar Association.  She walked briefly through the history of lawyer advertising regulation and laid out the standards that apply today, mostly focusing on the attorney advertising rules in New York (many of which are her handiwork!) but without failing to address the complex nature of multi-jurisdictional and online practice in our era.  Bernice also discussed specific cases that have come before ethics panels and acknowledged that applying the standards in a social-networking, multimedia, branding-branding-branding world can be tricky.

I spoke next.  Obviously I spoke about myself.   In other words, I acknowledged the fact that I was invited to participate in the panel in part because I am considered a “success” a “branding” my practice among fashion lawyers — having come to terms with the fact that I probably really am a “fashion lawyer,” just kind of a lumpy one — and that it probably does “work” for me.  But I made a point of discussing how conflicted myself is about all this myself-talking-about.  Believe me, I am.  It’s almost embarrassing, really.  Indeed, I said, (a) I’m not sure what it really means to say that all this @roncoleman “branding” “works,” in terms of “fashion” clients; (b) what I do on this blog and in social networking is, to put it mildly, not for everyone; (c) what I do here is certainly not for everyone who wants to represent major fashion houses or the other big-money parts of the fashion “industry,” but that (d) people who represent smaller clients in design, retail and other parts of that business are also fashion lawyers, and … that’s okay; (e) unfortunately, while there are opportunities in marketing to and serving such clientele, the first part is easier than the second if you don’t have bona fide experience — ideally representing Big Fashion for a meaningful period of time, as I have been privileged to do — and that (f) yeah, I know, that experience is not so easy to get these days.  By the end of my presentation I managed to ensure that not one participant would get any ideas about sending me a resume.

Not so the next speaker, the highly tall and distinguished and stentorian and charming Ted Max, who did not hesitate to reinforce my point that we way we do things here at LIKELIHOOD OF CONFUSION® is not for everyone.  Ted recommended the approach of being really successful instead, and discussed fashion lawyer “branding” in the broader sense of career development — Read More…

Best of 2006: Side by side comparison doesn’t decide likelihood of confusion

Originally posted 2015-01-19 14:43:43. Republished by Blog Post Promoter

Originally posted on July 11, 2006.

Dooney pattern - Thumb

Dooney’s pattern

This is an important decision: The Second Circuit Court of Appeals has partially reversed the earlier ruling of the U.S. District Court for the Southern District of New York (full decision here) in Louis Vuitton Malletier v. Dooney & Bourke, Inc.

Here’s the “money quote” as a once-great blogger taught me to say (citations and internal quotes omitted; link added) :

We turn next to the question of likelihood of confusion. . . . The similarity of the marks is a key factor in determining likelihood of confusion. To apply this factor, courts must analyze the mark’s overall impression on a consumer, considering the context in which the marks are displayed and the totality of factors that could cause confusion among prospective purchasers.’ The district court here noted that there were “obvious



similarities” between the Louis Vuitton and Dooney & Bourke handbags. However, it determined that despite the similarities, the two marks were not confusingly similar. It appears the trial court made the same mistake that we criticized in [the] Burlington Coat Factory [decision]: inappropriately focusing on the similarity of the marks in a side-by-side comparison instead of when viewed sequentially in the context of the marketplace.

The district court reasoned:

Read More…

The sincerest form of flattery

Originally posted 2014-03-14 10:40:57. Republished by Blog Post Promoter

Susan Scafidi seems genuinely shocked — no, I mean, genuinely!  — over this comment by Ralph Lauren:

Nit fun unzer

When the New York Times‘ Eric Wilson listened to Oprah Winfrey and Ralph Lauren chat for charity, one exchange stood out:

“How do you keep reinventing?”

“You copy,” he said. “Forty-five years of copying, that’s why I’m here.”

Of course, everyone knows that the signature looks of the Ralph Lauren family of brands are inspired by classic Americana — with an occasional detour around the globe — but coming from the guy who was on the losing end of the best-known design piracy case of the late 20th century, the admission strikes a chord.

Honestly, honesty?  Now, when the U.S. may be on the brink of finally passing a law that, while it wouldn’t come anywhere near the level of the French protection that wrangled Ralph, would have a similar effect in some cases?

Oh, that law!

Well, a litigation dust-up here and there notwithstanding, Ralph can afford to be honest, honestly.  I think, indeed, Mr. Lifshitz is referring not to copying other proprietary designs, but to that talent that turned him into a gazillionaire:  Mastering the art of assimilating and replicating the look and feel not, with all due respect, of “classic Americana” but a very focused upper-crust Northeastern WASP sub culture and making it his own.

I when I was in college, I observed plenty of Jewish kids from backgrounds like mine, but a generation or two deeper entrenched in assimilation, do this on a personal level.  Some pulled the copying it off, some didn’t.  (I mainly went in the other direction.)  Ralph went beyond accessorizing social climbing mobility and ethnic metamorphosis to selling them.  And he did  it brilliantly, tastefully and very, very profitably.

He’s a real gem.  Why should he lie about “stealing”?

The better question is a question on the one Susan asks at the end of her article:  “Now, when the U.S. may be on the brink of finally passing a law that, while it wouldn’t come anywhere near the level of the French protection that wrangled Ralph, would have a similar effect in some cases?

Of course it would.  Absolutely.  But the real question is not what would effect would the substantive provisions of the IDPPPA have had, in the abstract.  It’s what effect would the cost of the IDPPPA have had on the young House of Lauren. Read More…

Couture in Court

Originally posted 2012-02-29 23:27:24. Republished by Blog Post Promoter

Fabulous filings for fashionistas — and those who just want to look like them!

Luxury goods rental

Originally posted 2013-08-15 15:06:12. Republished by Blog Post Promoter

“Bag Borrow or Steal™ – Borrow or Rent the Latest Authentic Designer Handbags Purses Jewelry and Accessories.”

You know they — the Big IP guys — are sitting in conference rooms trying to figure out how to stop this.

Soon enough when you buy a Gucci bag, it will come with a non-transferable “licensing” agreement!

My actual prediction:  They will make IP claims preventing the display of their merchandise in connection with promotion of this service, claiming, preposterously, a LIKELIHOOD OF CONFUSION as to affiliation, sponsorship, ownership… something.

Fashion Law at the Federal Bar Association

Via fashionista-lawyer-to-the-fashionista-stars Olivera Medenica, it’s time to roll up for the Federal Bar Association‘s 2016 Fashion Law Conference at the Parson’s School of Design!

Look, here’s the text I copied and pasted from the FBA website, minus the egregiously unfashionable FBA html:

Fashion Law Conference 2016 FBA

Parsons School of Design: School of Fashion
Starr Foundation Hall, UL102
University Center 
New York, NY

The program is organized by the The Federal Bar Association in collaboration with CAREER SERVICES at The New School.

Fashion is a $300 billion industry in the United States—even more on a global scale. Join the Federal Bar Association for a high-energy conference focused on the unique legal issues affecting this economic giant. Legal professionals and industry representatives will explore practice areas including labeling regulation, ethical sourcing of labor, anti-counterfeiting, antitrust issues, e-commerce, and mobile apps.

Check out our guest post on The Fashion Law to examine shining examples of ethical bling and industry-related regulations in place to ensure the integrity of diamond and gold supply chains.

Previous related posts can also be found here. CLE credit is available, and attendees will benefit from networking opportunities throughout the day.

Interested in becoming a conference sponsor? Fill out our sponsor request form here and email to Heather Gaskins at [email protected].

Now, fabulous, no? Go!  Registration, program and other information about the event are available at the FBA website.Fashion Law Conference 2016 via Medenica Law

Famous names on famous dames

Originally posted 2013-04-29 12:04:56. Republished by Blog Post Promoter

Oscars after-party thoughts: Did you ever wonder about just how far someone can go “knocking off” a famous designer gown?

Counterfeit Chic twirls around some elegant ideas.

Parlous times

Originally posted 2007-11-02 10:58:37. Republished by Blog Post Promoter

New York magazine:

It’s mortifying enough to be busted carrying a faux designer handbag (um, not that we would know or anything), but imagine how much worse it must be to be caught by the designer.

I know that haunts my nights on the town. Or would, if I ever bought counterfeits. Of course.

Best of 2014: Lady calls me up…

Originally posted 2014-12-24 07:50:40. Republished by Blog Post Promoter

Originally posted on February 27, 2014.

Did you ever wonder what happened in the Val Colbert declaratory judgment action against Chanel?  Yeah, I forgot about it too, and evidently I was not alone.  Because something did happen, and no one seemed to notice.

But more about that in a minute.  Here’s why I even thought of it.

Lady calls me up — can I do anything for her?  She sells, or someone else sells but she sells them for her, or the other way around — anyway, there were these listings on eBay, for buttons that were removed from authentic designer clothing.  In other words, authentic designer buttons, being sold detached from the clothing they came in with.

And eBay, it appears, removed these listings, and there ought to be a law!

There is a law, actually.  It’s the law of contracts, and, all things being equal (yes, they never are, but let us say it), it’s the law that governs almost everyone’s relationship with eBay, which is a private company.  Your contract with eBay, as a seller or a buyer, is of course subject to its rules and regulations.  And just like Mom’s and Dad’s rules and regulations, and those of almost any private party that are not restricted by the criminal law or civil rights concerns, those rules can be whatever the parties agree to.  Or, in the case of eBay, whatever anyone who wants to play has to agree to, because for most of us, eBay will not negotiate.

eBay will negotiate with others, however — others who are not like you and me because they are rich , if only (though seldom only) in brand equity.  These parties have, at least in theory, the ability to upset the nice way it’s going for eBay, litigation-wise, on IP issues such as secondary liability for trademark infringement.

And these parties, many of whom are designers, really really really hate it when people do anything — anything! — well, anything other than burn it up or shoot it into outer space — with the hardware, buttons or other stuff bearing their logos but not the stuff they were originally attached to.  I should not have to explain why they hate this.  And by all indications, they have made this fact clear to eBay, which, despite what you think, mostly wants to work with these outfits.  For the goose does continue to lay very nicely the golden eggs.

ebay-logoAnd eBay hears it.

So, we know, again, that eBay can remove your listing for any reason or for no reason, almost all the time.  Many of the reasons it does have for such removals do exist, however, and they have to do with intellectual property — and not always with infringement, much less counterfeiting.  No, your authentic stuff may be pulled from eBay even though it is authentic, as eBay explains:

If we removed your listing, it’s probably because it either violated the law or one of our policies. Or, it may have been removed because the item’s rights owner (for example, Coach or Louis Vuitton) asked us to remove it. This can happen even if your item is genuine.

So how about the buttons, the ribbons, the hardware?  For your non-listing pleasure,  here is the specific rule that you agreed to when you agreed to sell on eBay which addresses that question: Read More…