Fashion Industry’s ‘Juicy’ Trademark Case
Juicy Couture has sued Jesus Juice Coature in federal court in Manhattan, alleging trademark infringement and false designation of origin under the federal Lanham Act, and trademark infringement and unfair competition under New York law. Why? Because Jesus Juice Coature has started to advertise and promote its “upscale outerwear” (via its Facebook and MySpace page) using a mark that Juicy Couture claims sounds and looks too similar to its own.
In describing the lawsuit, the media have suggested that the dispute between the famous fashion apparel brand Juicy Couture and the new outerwear outfit Jesus Juice Couture seems a bit silly. CocoPerez noted the suit sounded “a little ridiculous” and SHEFinds blogger Brittany Zwillich wrote she didn’t think there was much danger of confusing one brand with another.
Are they right?
(From here on, Juicy Couture will be referred to as “JC” and Jesus Juice Coature as “JJC”).
In order to sue for trademark infringement, you need a protectable trademark. The complaint notes that JC has four different registered trademarks for the name “Juicy Couture” which cover use of the name in relation to fashion apparel, luggage, jewelry, accessories, footwear, handbags and fragrances. The complaint also notes that the company has used the “JC” initials in connection with promoting, selling and advertising its products
Notably, while “Couture” is not trademarked, it is not because JC’s attorneys were asleep at the switch. Indeed, they couldn’t have trademarked “Couture” if they tried; the law does not permit for anyone to trademark merely descriptive words (such as “Couture”) standing by themselves. But, by adding “Juicy” and giving the words a distinctive look, JC produced a registrable and protectable trademark that people recognize in relation to its products.
So JC definitely has a valid trademark. What, then, of its allegations of infringement and false designation of source? The company’s chance of success hinges on whether its lawyers can show that JJC used its mark in a way that created a likelihood of confusion among consumers; JC claims that the Jesus Juice Coature mark creates a false impression that JJC’s products are actually JC’s, or that JC approved, endorsed or sponsored them. But will the court agree?
According to NYLS Professor Dan Hunter, JC’s case is not very strong. And we at LASIS agree. In evaluating whether there is likelihood of confusion, courts look to a number of factors. The relevant ones in this case are the strength of the plaintiff’s mark, the degree of similarity between the marks, whether the adversaries are selling competing products, evidence of actual confusion, the quality of the defendant’s product, the sophistication of the consumer who buys plaintiff’s products, and the good or bad faith of the defendant.
Contrary to what the fashion blogs suggest, there are actually a few factors that weigh in favor of JC. For starters, the JC mark has been in use for over twenty years and has been featured in a number of movies by celebrities donning JC garb. There is no question that the Juicy Couture mark has built up ample goodwill. Moreover, both JC and JCC sell outerwear and leather products. And the media was spot on in noting a similarity in both marks’ font—notably the “J”s.
But JC may have a hard time establishing the other factors. In terms of the quality of defendant’s products, JC may struggle to show that its clothing is of higher quality than JJC’s upscale urban attire. Additionally, people who spend quite a bit of money on high-end fashion purchases (such as those who spend $348 on a Juicy Couture jacket) likely pay close attention when they are choosing between different brands and styles. This suggests a certain level of sophistication of Juicy Couture’s buyers. And while JC alleges that JJC has acted in bad faith in choosing its name (and its image), there are other explanations of the JJC name. According to the JJC’s CEO, the Jesus Juice Coature name was chosen because “Jesus = The King of Kings. Juice = Respect. Coature = Custom, premium outerwear. Simple.” (We don’t buy this explanation, actually, but we’ll let you decide.)
Only time will tell if JC has any evidence of actual consumer confusion. Based on the media response to the case, however, it seems pretty improbable.
Professor Hunter noted that JC likely would have preferred to argue a dilution claim, which allows for famous trademark holders to sue when someone else uses an infringing mark. The rationale behind trademark dilution is that if the market is riddled with strikingly similar marks, the distinctive nature of the famous mark is diminished. But JC’s mark would have to be recognized nationally as a truly famous trademark in order to bring such a claim. Is it recognized as a truly famous mark? We’re not sure, and its attorneys probably had their doubts too, which is presumably why they didn’t plead dilution in the lawsuit.
JC’s lawsuit might not be a winner but we wouldn’t call it absurd or silly, either. Perhaps the more accurate description would be to say that its chances are — like some JC pants — rather slim.