IP Law Daily, TRADEMARK NEWS: Cool Brands sues LIV Golf, Hy Flyers GC for use of nearly identical mark, (Jun 12, 2023)

By Patricia K. Ruiz, J.D.

Cool Brands cited evidence of actual confusion after golfer Phil Mickelson wore apparel bearing the infringing mark.

Cool Brands Supply S.A. filed suit against LIV Golf Incorporated and Hy Flyers GC (HFGC), alleging LIV Golf and HFGC improperly and illegally used a nearly identical logo mark to Cool Brands’ inherently distinctive and famous logo. In the lawsuit, filed in the U.S. District Court for the District of New Jersey, Cool Brands alleges trademark infringement, unfair competition, and other relief arising under the Lanham Act and New Jersey state law (Cool Brands Supply S.A. v. LIV Golf Inc. June 8, 2023).

Senior user of mark. According to the complaint, LIV Golf and HFGC commenced use of the logo nearly twenty years after Cool Brands adopted its logo and obtained federal trademark registration (No. 6,874,791). Cool Brands sells footwear and apparel including shoes, hats, and clothing bearing its logo, and its mark has come to be widely recognized by the public as identifying Cool Brands, its Fallen brand, and its goods. The Fallen brand and Cool Brands’ bark are among the most famous, recognized, and popular brands within the skateboarding industry, the complaint alleges, and Cool brands has: (1) been recognized as one of the most popular skateboarding and apparel brands by several sources; (2) sponsored some of the most famous skateboarders in the world, who have worn Cool Brands’ branded apparel on numerous nationally televised competitions; and (3) been featured in numerous publications and other solicited and unsolicited media features. Because of its reputation, the complaint alleges Cool Brands’ mark is entitled to a wide scope of protection.

Use of mark. LIV Golf, a Saudi Arabian-backed professional golf tour, uses its logo on hats, shirts, and sweatshirts for one of its teams, HFGC, selling and distributing the merchandise at LIV Golf tournaments, through third party retailers, and online. Cool Brands alleges the merchandise bearing the infringing mark is highly related and, in many cases, identical to its own goods. Additionally, Cool Brands alleges the apparel sold by both companies are not exclusively sold to those who play their respective sports; even if there were no overlap, given the strength of Cool Brands’ mark, it can easily bridge any gap between any non-identical goods and services. Thus, Cool Brands argued, the goods and services provided under the infringing mark are directed toward the same class of consumers, such that the companies are unquestionably in competition with respect to their goods and services.

Confusion. The similarities between the two marks, particularly when used on clothing, are striking and confuse consumers, causing damage to Cool Brands’ senior mark and brand, the complaint alleges. Because of the use of the infringing mark in connection with goods that are identical to many of Cool Brands’ goods, consumers are likely to believe LIV Golf’s goods and services are provided by, sponsored by, endorsed by, approved by, licensed by, or in some other way legitimately connected to Cool Brands, which they are not.

Notably, the infringing mark has been featured on worldwide televised major golf tournaments, including on apparel worn by HFGC’s captain and apparent equity stakeholder, Phil Mickelson. After the 2023 Masters, Mickelson garnered much press attention, resulting in videos and photographs of Mickelson wearing the infringing logo being published around the world. Third parties publicly commented on the similarities between the marks, questioning whether Mickelson was sponsored by a skateboarding brand. The complaint alleges the continued use, promotion, and marketing of the infringing mark and products bearing the infringing mark, as well as the resulting media attention surrounding LIV Golf and Mickelson, will likely cause reverse confusion, leading consumer to believe LIV Golf and HFGC are the senior users of the mark and that Cool Brands’ mark infringes upon the infringing mark, which it does not.

Relief sought. Cool Brands through its lawsuit seeks an order permanently enjoining and restraining LIV Golf and HFGC from using the infringing mark or any other marks confusingly similar to Cool Brands’ mark. Cool Brands also seeks compensatory damages and attorney’s fees and costs.

The Case is No. 3:23-cv-03155.

Attorneys: Abigail Jean Remore (Chiesa Shahinian & Giantomasi PC) for Cool Brands Supply S.A.

Companies: Cool Brands Supply S.A.; LIV Golf Inc.; Hy Flyers GC

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