IP Law Daily, TRADEMARK—E.D.N.Y.: Mark for iconic 1980s Members Only jacket resurfaces in litigation, (May 27, 2026)

By Steven D. Cole, J.D.

A clothing manufacturer may have infringed the MEMBERS ONLY trademark owner’s rights by printing the mark on the back of a sweatshirt, though the mark was evidently not famous enough to support a federal dilution claim.

The alleged infringer’s motion to dismiss the trademark infringement and dilution claims was granted in part and denied in part by a federal court in New York. A Canadian clothing company was sued by the MEMBERS ONLY trademark owner after manufacturing and selling hooded sweatshirts featuring the term in small letters on the back, beneath the larger “Palm Springs Country Club” text. The court found that the manufacturer’s “fair use” defense did not absolve it of potential liability, and that the MEMBERS ONLY mark did not rise to the level of fame required to support a trademark dilution claim under the Trademark Dilution Revision Act (TDRA) (JR Apparel World LLC v. Groupe Dynamite, Inc., No. 2:25-cv-04374-GRB-LGD (E.D.N.Y. May 21, 2026)).

The jackets. The alleged infringer, Groupe Dynamite, Inc. (GDI), manufactured and sold, among other items of apparel, a hooded sweatshirt with the text “Palm Springs Country Club” printed in large lettering on the back, and beneath this, in smaller text and all-caps, “MEMBERS ONLY.” The Members Only brand gained significant exposure in the early-to-mid 1980s with sales reaching $100 million annually, and the Members Only jacket became a defining fashion trend of the time. JR Apparel World LLC (JR) acquired the brand, as well as its trademarks and associated properties, in 2012. Since 2013, JR has sold goods under the brand, seeking to revitalize it and make it relevant again. When JR learned about the Palm Springs Country Club hoodie, it informed GDI about a possible infringement issue. The parties were unable to reach an amicable resolution, and JR filed suit, asserting claims for trademark infringement, unfair competition, and trademark dilution under the Lanham Act, as well as injury to business reputation, common law infringement, and unfair competition under New York law. GDI moved to dismiss the infringement and dilution claims.

Fair use defense. GDI did not contest that JR sufficiently stated a prima facie case under the Lanham Act as a likelihood of confusion. Instead, it relied on the “fair use” affirmative defense, under which an alleged infringer is not liable if it establishes that it used the term at issue other than as a mark, in a descriptive sense, and in good faith. The court was not convinced, however, that GDI used the MEMBERS ONLY mark as anything other than a mark.

GDI first argued that its use of a small font relative to the words “Palm Springs Country Club” weighed against this finding. But, unlike many apparel trademarks, “MEMBERS ONLY” is often printed in small, non-descript font. As the court observed, “[p]art of the brand strategy is understatement.” GDI’s position was further weakened by the fact that no trademark or other branding identifying GDI as the manufacturer appeared in any form on the sweatshirt.

Next, GDI pointed to the larger-font “Palm Springs Country Club” text to contend that, though it did not claim trademark rights in that mark, “where consumers understand one design element to be a trademark use, they are less likely to understand a second, less prominent design element to be a trademark use.” This argument was unpersuasive here, as the complaint alleged that the MEMBERS ONLY mark had been frequently employed alongside other established trademarks. Regardless, it was not plausible that a consumer would believe the sweatshirt to have been manufactured by a country club, especially one that had been closed for more than ten years. On the other hand, a reasonable consumer could plausibly infer that the inclusion of “MEMBERS ONLY,” a recognizable mark, identified the manufacturer’s brand.

Trademark dilution. The Lanham Act, as amended by the TDRA in 2006, protects the owners of “famous marks” from the likelihood of dilution through blurring or tarnishment. To qualify for protection under the TDRA, the trademark must be of the level of fame so as to approach the status of a “household name” that spans generations, like “Budweiser” and “Barbie Doll.” GDI challenged JR’s assertion that the MEMBERS ONLY mark had attained such status. In its reply, JR offered no substantive response, outside of a cursory statement that JR did not waive its dilution claim. That recitation was insufficient to preserve the claim, which the court deemed forfeited.

Even so, the claim would not have survived because JR failed to allege facts to support this level of fame. While JR did plead that the MEMBERS ONLY mark was worn by many celebrities and appeared in many films and television programs, “those assertions are insufficient, even at the motion to dismiss stage, for considerable media coverage does not on its own warrant a finding of fame.” And as GDI pointed out, JR’s stated goal of “reestablishing” the Members Only brand belied its contention that the mark was sufficiently famous so as to be afforded protection under the TDRA.

New York’s analogous trademark dilution law applies a more relaxed standard which does not require a mark to be “famous” for protection against dilution to apply (N.Y. Gen. Bus. Law § 360-l). Therefore, the court denied GDI’s motion to dismiss this claim.

The Case is No. 2:25-cv-04374-GRB-LGD.

Judge: Brown, G.

Attorneys: Brian Marc Taddonio (Taddonio Law PLLC) for JR Apparel World LLC. Andrew James Ligotti (Alston & Bird LLP) for Groupe Dynamite, Inc.

Companies: JR Apparel World LLC; Groupe Dynamite, Inc.

Cases: Trademark NewYorkNews GCNNews