December 2013 Issue
Civil Cases
Kate Spade LLC v. Saturdays Surf LLC,
2013 WL 2986454 (S.D.N.Y. June 17, 2013)
CASE SUMMARY
FACTS
Women’s apparel company Kate Spade LLC (“Kate Spade”) filed an action seeking declaratory judgment that its new brand, SATURDAY, did not infringe the mark SATURDAYS SURF NYC and other SATURDAY-formative marks owned by Saturdays Surf LLC (“Surf”), a men’s clothing company. Surf filed a counterclaim alleging trademark infringement and reverse confusion, claiming that Kate Spade’s use of the word “Saturday” would confuse consumers by leading them to believe either that Surf’s products were licensed by, affiliated with, or otherwise associated with Kate Spade, or that Surf was infringing Kate Spade’s junior SATURDAY mark.
ANALYSIS
The district court analyzed Surf’s trademark-infringement claims first before turning to Kate Spade’s declaratory judgment action. Addressing the protectability of Surf’s alleged SATURDAY-formative marks, SATURDAYS SURF NYC, SATURDAYS, and SATURDAYS SURF, the court held that SATURDAYS SURF NYC was a valid mark based on its federal registration and use as a source identifier, but noted that the scope of protection it and Surf’s other asserted marks are entitled to would depend upon the strength of the mark SATURDAYS standing alone. The court ruled that the terms “Saturday” or “Saturdays” were “best described as suggestive,” and the fact that “‘Saturday’ is a day of the week does not necessarily make it ineligible for trademark protection.” The court noted that the common usage of “Saturday” or “Saturdays” in the apparel and accessories industry detracted from Surf’s distinctiveness claims, and concluded that Surf should not be permitted to monopolize “Saturday” as a trademark. The court also held that Surf did not present sufficient evidence showing use of SATURDAYS as a trademark, finding among other things that the company used the mark SATURDAYS SURF NYC more often than it did SATURDAYS alone. The court also found that Surf failed to demonstrate that it used SATURDAYS SURF as a trademark for Surf’s men’s clothing products, as was alleged.
Turning to the likelihood-of-confusion analysis, the court considered the strength-of-the-marks factor and found that the mark SATURDAYS SURF NYC was stronger than the mark SATURDAY standing alone, but that the strength of the mark was “weakened by the fact that the word really at issue in this case—‘Saturdays’—has somewhat extensive third party use.” The court then considered the similarities and differences between the parties’ marks, and ultimately found that the similarities were not likely to confuse consumers, given the fame of the KATE SPADE brand, which Kate Spade used in connection with its SATURDAY mark.
Regarding the actual confusion factor, the court was not persuaded by the evidence provided by Surf, namely, a single instance in which Kate Spade’s SATURDAY brand shorts used in a photo shoot were mistakenly returned to Surf. The court found this evidence to be inconclusive, and likely was the result of carelessness, not confusion. Finally, the court found that Kate Spade had adopted the SATURDAY mark in good faith, citing Kate Spade’s lack of knowledge about Surf and its consultation with counsel before and after learning of Surf and its SATURDAY-formative marks.
The court also rejected Surf’s reverse-confusion claim, finding it unlikely that consumers would confuse Surf, a company specializing in men’s clothing and licensing men’s products, with Kate Spade, a famous women’s apparel brand. Following its determination that there was no likelihood of consumer confusion, the court ruled in Kate Spade’s favor on the infringement counterclaims and found its request for declaratory judgment to be unnecessary. CONCLUSION
This case highlights the significance of the strength of a senior party’s marks in the infringement analysis, and demonstrates that a common term, such as a day of the week, that is commonly used in a particular industry, may be entitled to a very narrow scope of protection, and may easily be distinguished by the inclusion of a well-known house mark.
