IP Law Daily, TRADEMARK—S.D.N.Y: Fashion designers group defeats attempt to enjoin its use of “New York Fashion Week” , (Aug 15, 2016)

By Robert Margolis, J.D.

Fashion Week, Inc. (“FWI”) established neither a likelihood of success nor irreparable harm from the Council of Fashion Designers of America (“CDFA”) and WME-IMG, Inc.’s use of the FWI’s asserted trademarks “NEW YORK FASHION WEEK,” “NYFW,” and “NYFW THE RUNWAY SHOWS” in connection with fashion events, the federal district court in New York has held in denying FWI’s motion for a preliminary injunction (Fashion Week, Inc. v. Council of Fashion Designers of America, Inc., August 12, 2016, Koeltl, J.).

CDFA is a non-profit trade association with more than 4,000 member fashion design businesses. WME-IMG, Inc., is a management and production company. These defendants schedule, coordinate, and produce fashion events in New York City, comprised of a series of fashion shows featuring prominent designers. CDFA has been organizing semi-annual, week-long events since its founding in 1962. They draw over 230,000 attendees and generate close to $900 million annually.

From 1993 to 2015, these events were formally named after the location or sponsor, such as “Mercedes-Benz Fashion Week,” and commonly were referred to in the press and fashion industry as “New York Fashion Week.” When Mercedes-Benz ceased sponsoring the events in 2015, defendants announced they would be featuring “New York Fashion Week,” “NYFW,” and “NYFW The Shows” in their promotional materials

Plaintiff FWI, founded in 2013, produces fashion shows and sells tickets for them, targeting consumers and fashion aficionados. FWI positions its shows as publicly accessible alternatives to the industry-targeted events produced by the defendants. FWI schedules its events to run at the same time as the defendants’. A predecessor company in 2012 successfully applied for a trademark from the United States Patent and Trademark Office for “NEW YORK FASHION SHOWS.” That company in 2013 was renamed Fashion Week, Inc., and then applied for a trademark for NEW YORK FASHION WEEK on the Supplemental Register for online entertainment ticket agency services, which was granted in 2014. It then produced and sold tickets for shows titled “New York Fashion Week” in 2014.

CFDA petitioned the USPTO to cancel the NEW YORK FASHION WEEK in January 2015. In February 2016, FWI successfully moved to dismiss that petition, on the grounds that CFDA failed to prosecute it.

In May 2015, after the defendants announced their intent to use NYFW online to promote their upcoming fashion event, FWI responded by filing for the NYFW mark with the USPTO for its online ticket sales. The registration was granted in December 2015.

In August 2015, defendant WME-IMG sent FWI a cease and desist letter, requesting that it stop promoting its shows in a manner that might mislead consumers into thinking they were purchasing tickets to defendants’ events. In subsequent discussions, FWI offered to transfer its marks to defendants, and threatened litigation, delay, and bad press for defendants. FWI then filed for a series of marks, including NYFW, for organization of fashion shows for entertainment purposes.

When defendants announced in mid-2015 their intent to use NYFW to promote their events and “New York Fashion Week” in connection with their fall 2015 and winter 2016 fashion events, FWI sent a cease and desist letter, and then sought injunctive relief in June 2016.

FWI’s delay in suing. The court highlighted FWI’s delay in bringing suit, concluding that it waited until long after it became aware of the defendants’ competing claim to NEW YORK FASHION WEEK and NYFW before suing. In its January 2015 cancellation petition, CFDA represented that it had used those marks continuously since 1994. Coupled with the other evidence of defendants’ announced intended uses of the marks in 2015 described above, there was ample evidence that FWI was on notice. The court rejected FWI’s arguments that its delay in suing resulted from attempts to negotiate a settlement to the dispute, noting that there was no evidence that the defendants ever indicated a willingness to revert back to sponsor-based names.

Further, there was no evidence of negotiations continuing after January 2016, and FWI did not seek its injunction until late June, leaving a six-month gap that FWI could not explain. The court concluded that FWI’s delay was fatal to establishing the requisite irreparable harm for injunctive relief.

Likelihood of success. The fact that FWI’s registrations for NEW YORK FASHION WEEK and NYFW THE RUNWAY SHOWS appear on the Supplemental Register, and only for online ticket sales, undermined FWI’s likelihood of success on the merits of any of its trademark claims, the court held. Registration on the Supplemental Register does not carry with it the presumption of validity, ownership, and the exclusive right to use the mark that comes with registration on the Principal Register. Absent that presumption, FWI was required to establish that its marks are inherently distinctive or have acquired distinctiveness through secondary meaning. The court held that FWI did not do so.

FWI did not argue that its marks are suggestive, fanciful, or arbitrary; instead the parties seemed to agree they are descriptive. Therefore, FWI had to show that its marks acquired secondary meaning. But it adduced no evidence that is typically considered probative of secondary meaning, such as consumer surveys, unsolicited media coverage, or advertising expenditures. It pointed only to two shows it produced, which when coupled with its short length of use of the marks, undermined its argument for secondary meaning.

In addition, FWI could not establish exclusive use of the marks, given the defendants’ prior use of, and association with, the term “New York Fashion Week” in connection with its events for more than two decades. The court found no persuasive evidence that the public associates FWI with the organization that puts on the “New York Fashion Week” semi-annual, week-long events. And the defendants’ prior use of sponsorship branding did not undercut their right to use “New York Fashion Week” and the claim to protectable rights flowing from that use, the court held. Indeed, that name had a long association with the defendants before FWI began using it, which the court characterized as FWI’s attempt to “cash in on the decades of publicity for New York Fashion Week that the plaintiff had nothing to do with.”

The case is No. 1:16-cv-05079-JGK.

Attorneys: Robert Leslie Greener (Robert L. Greener, Law Office) for Fashion Week Inc. Marc Schuyler Reiner (Hand Baldachin & Amburgey LLP) for Council of Fashion Designers of America, Inc. and CFDA Foundation Inc. Andrea Lynne Calvaruso (Kelley Drye & Warren, LLP) for WEM IMG LLC.

Companies: Council of Fashion Designers of America, Inc.; CDFA Promotions, inc.; Fashion Week, Inc.; WME IMG LLC

Cases: Trademark NewYorkNews