IP Law Daily, TRADEMARK—S.D.N.Y.: Tory Burch wins suit against alleged jewelry counterfeiter, (Dec 8, 2014)

By Jody Coultas, J.D.

Fashion designer Tory Burch, LLC, has been granted summary judgment by the federal district court in New York City on trademark infringement and counterfeiting claims against jewelry maker Lin & J International, Inc. (River Light V, L.P. v. Lin & J International, Inc., December 4, 2014, Cote, D.). There was a substantial likelihood of confusion as to the source of Lin & J’s products due to its use of substantially similar designs.

In September 2003, Tory Burch filed a trademark application for use of its TT Logo, a T-over-T design inscribed within a circle, for use on jewelry, handbags, clothing, and accessories. The application claimed a first use in commerce date of February 1, 2004. Tory Burch has also continuously used the T-over-T Design without a circle (the “Bare TT Logo”).

Lin & J manufactures, promotes, and sells fashion jewelry bearing an “Isis Cross Design” and “Predecessor Design,” which Tory Burch claimed infringed its trademarks. A number of the Accused Products closely resembled Tory Burch jewelry not just in their use of the Isis Cross Design or Predecessor Design, but in all respects. Tory Burch identified 213 retailers who referred to Tory Burch in marketing Lin & J’s products.

Trademark validity. Tory Burch’s TT Logo and Bare TT Logo were entitled to protection, according to the court. Registering a mark with the PTO creates a presumption that the mark is valid and entitled to protection, and becomes incontestable after five years of use. Marks that are “distinctive” rather than “generic” are also entitled to protection. Stylized shapes or letters may be distinctive where the design is not commonplace but rather unique or unusual in the relevant market. Both marks at issue have been registered with the PTO, and the TT Logo has become incontestable. The TT Logo was also entitled to protection based on the uncontroverted evidence that the public was “moved in [some] degree to buy [Tory Burch products bearing the logo] because of [their] source.”

Likelihood of confusion. Lin & J’s products were likely to cause confusion as to the source of the goods, according to the court. The TT Logo is a strong mark, and Lin & J’s designs were substantially similar to the TT Logo. The similarity of the marks was reinforced by similarities between the products. Although Lin & J’s products often retailed for less than Tory Burch products, some products retailed for similar prices and were sold alongside Tory Burch products. There was evidence of actual consumer confusion. Lin & J also used the designs in bad faith.

Counterfeiting—design mark. The Predecessor Design and Isis Cross Design were “substantially indistinguishable” from the TT Logo, according to the court. The Lanham Act defines “counterfeit” as “a spurious mark which is identical with, or substantially indistinguishable from, a registered mark.” It was also clear that Lin & J intentionally counterfeiting Tory Burch products based on Lin & J sold one product as “Tory Burch Style,” and hundreds of retailers marketed Lin & J’s products as “Tory Burch” products. Lin & J falsified invoices and fabricated evidence of prior use of these marks. A survey sponsored by Tory Burch found that consumers believed Lin & J’s designs to be “substantially indistinguishable” from the TT Logo, and identified the products as genuine Tory Burch products at approximately the same rate they correctly identified authentic Tory Burch jewelry. Therefore, Tory Burch was entitled to summary judgment as to Lin & J’s liability for counterfeiting the TT Logo.

Counterfeiting—word mark. Tory Burch was not entitled to summary judgment on its claim for counterfeiting the “Tory Burch” word mark, according to the court. Lin & J described one of its products as “Tory Burch Style Stretch Ring” in invoices to customers. The description was not identical or substantially indistinguishable from, the “Tory Burch” word mark used to brand authentic Tory Burch jewelry.

The case is No. 13cv3669 (DLC).

Attorneys: Irene E. Hudson, Natalie L. Arbaugh, and Michael A. Bittner (Fish & Richardson PC) for River Light V, L.P. and Tory Burch LLC. Howard Z. Myerowitz (Song Law Firm LLC) for Lin & J International, Inc., Youngran Kim, LJ Brand, Inc., and NJ Lin & J International, Inc.

Companies: River Light V, L.P.; Lin & J International, Inc.

Cases: Trademark NewYorkNews