Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA937383 Filing date: 11/27/2018
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91216585 Party Plaintiff Kate Spade LLC Correspondence G ROXANNE ELINGS Address DAVIS WRIGHT TREMAINE LLP 1251 AVENUE OF THE AMERICAS 21ST FLOOR NEW YORK, NY 10020 UNITED STATES [email protected], [email protected], [email protected], li- [email protected], [email protected] 212-489-8230
Submission Brief on Merits for Plaintiff Filer's Name L. Danielle Toaltoan Filer's email [email protected] Signature /LDT/ Date 11/27/2018 Attachments Trial Brief - FINAL - 11 26 2018 Redacted.pdf(206977 bytes ) In the matter of Serial No. 86/179,137 Mark: THE SPADES
Kate Spade LLC, Opposition No. 91217168 Opposer,
v.
The Spades Trademark Company, LLC
Applicant.
In the matter of Application Serial No. 85/932,097 Mark: PATIO BY THE SPADES
Kate Spade LLC, Opposition No.: 91216585 Opposer,
v.
Thatch, LLC Applicant.
OPPOSER’S TRIAL BRIEF
4848-3075-5457v.8 0096356-000028 TABLE OF CONTENTS Page I. PRELIMINARY STATEMENT ...... 1
II. THE RECORD...... 3
A. Opposer’s Record...... 3
B. Applicants’ Record ...... 5
III. STATEMENT OF ISSUES ...... 6
IV. STATEMENT OF FACTS ...... 7
A. The KATE SPADE Trademarks ...... 7
1. History of the KATE SPADE Brand ...... 7
2. Kate Spade’s Channels of Trade ...... 10
3. Fame and Strength of the KATE SPADE Trademarks ...... 10
a. Kate Spade’s Sales Figures ...... 10
b. Kate Spades Advertising and Promotion ...... 11
c. Unsolicited Media and Publicity for the KATE SPADE Marks ...... 15
d. Press Acknowledging the Fame and Recognition of the KATE SPADE Marks ...... 17
e. Cultural Significance and Other Evidence of Fame of the KATE SPADE Marks ...... 19
f. Market Research Demonstrates the Fame of the KATE SPADE Marks ...... 21
4. Registration of the KATE SPADE Trademarks ...... 22
5. Kate Spade’s Policing Efforts and Findings of Fame ...... 22
B. Applicants’ Marks ...... 23
V. ARGUMENT ...... 24
A. THE SPADES Marks Create a Likelihood of Confusion with Kate Spade’s KATE SPADE Marks ...... 24
i 4848-3075-5457v.8 0096356-000028 1. Kate Spade Has Prior Rights in the KATE SPADE Marks ...... 24
2. Applicants’ Marks are Confusingly Similar to the KATE SPADE Marks ...... 24
a. The KATE SPADE Marks are Famous and Entitled to a Broad Scope of Protection ...... 25
b. The Parties’ Marks are Similar in Appearance and Create the Same Commercial Impression and the Parties’ Goods or Services are Identical ...... 27
c. The Parties’ Goods Are Sold To the Same Consumers and Through The Same Channels of Trade ...... 30
d. Applicants Prior Association with the KATE SPADE Marks Enhances the Likelihood of Confusion...... 31
e. Kate Spade’s Consumers Are Considered General Consumers Under the Relevant Caselaw ...... 33
f. There is no Significant Third-Party Registrations or Evidence of Third-Party Use ...... 33
g. Summary of the DuPont Factors ...... 35
B. Applicants’ THE SPADES Marks are Likely to Dilute the KATE SPADE Marks ...... 35
1. The KATE SPADE Marks are Famous for Purposes of Dilution ...... 35
2. THE SPADES Marks are likely to blur the distinctiveness of the KATE SPADE Mark...... 38
a. The Parties’ Marks are Very Similar ...... 39
b. The KATE SPADE Mark is Inherently Distinctive ...... 39
c. Kate Spade Engages in Substantially Exclusive Use of the KATE SPADE Mark...... 39
d. The KATE SPADE Mark Enjoys a High Degree of Recognition and Applicants’ Adopted THE SPADES Marks in Bad Faith...... 40
CONCLUSION ...... 41
ii 4848-3075-5457v.8 0096356-000028 TABLE OF AUTHORITIES
Page(s)
Cases
7-Eleven, Inc. v. Wechsler, 83 U.S.P.Q.2d 1715 (T.T.A.B. 2007) ...... 37
Bose Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 63 U.S.P.Q.2d 1303 (Fed. Cir. 2002) ...... 25, 26, 28
Broadway Catering Corp. v. Carla Inc., 215 U.S.P.Q. 462 (T.T.A.B. 1982) ...... 31
Chanel, Inc. v. Jerzy Makarczyk, 110 U.S.P.Q.2d 2013 (T.T.A.B. 2014) ...... 37
Deere & Co. v. MTD Prods., Inc., 41 F.3d 39, 32 U.S.P.Q.2d 1936 (2d Cir. 1994) ...... 38
In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973) ...... 24, 25, 27, 31
Eli Lilly & Co. v. Natural Answers, Inc., 233 F.3d 456, 56 U.S.P.Q 2d 1942 (7th Cir. 2000) ...... 39
Equibrand Corp. v. Reinsman Equestrian Prods., No. 3:07–cv–0536, 2007 WL 1461393 (N.D. Tex. May 17, 2007)...... 32
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 U.S.P.Q. 24 (C.C.P.A. 1976) ...... 27
Gianni Versace, S.p.A. v. Versace 19.69 Abbigliamento Sportivo SRL, 328 F. Supp. 3d 1007 (N.D. Cal. 2018) ...... 28
Gucci v. Gucci Shops, Inc., 688 F. Supp. 916, 7 U.S.P.Q.2d 1833 (S.D.N.Y. 1988) ...... 29
Hard Rock Café Int’l (USA), Inc. v. Elsea, 56 U.S.P.Q.2d 1504 (T.T.A.B. 2000) ...... 25, 26, 28, 29
Hewlett-Packard v. Packard Press, Inc., 281 F.3d 1261, 62 U.S.P.Q.2d 1001 (Fed. Cir. 2002) ...... 28, 30
In re i.am.symbolic, llc, 866 F.3d 1315, 123 U.S.P.Q.2d 1744 (Fed. Cir. 2017) ...... 34
In re Iolo Techs., LLC, 95 U.S.P.Q.2d 1498 (T.T.A.B. 2010) ...... 27
iii 4848-3075-5457v.8 0096356-000028 JA Apparel Corp. v. Abboud, 568 F.3d 390, 91 U.S.P.Q.2d 1095 (2d Cir. 2009), on remand, 682 F. Supp. 2d 294 (S.D.N.Y. 2010) ...... 32, 33
Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 U.S.P.Q.2d 1129 (Fed. Cir. 2015) ...... 34
JL Powell Clothing LLC v. Powell, No. 2:13-cv-00160-NT, 2014 WL 347249 (D. Me. Jan. 30, 2014), amended by 2014 WL 12539686 (D. Me. Dec. 17, 2014) ...... 32
Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 U.S.P.Q.2d 1671 (Fed. Cir. 2015) ...... 34
Kate Spade LLC v. Saturdays Surf LLC, 950 F. Supp. 2d 639 (S.D.N.Y. 2013)...... 20
Kimberly-Clark Corp. v. H. Douglas Enters., Ltd., 774 F.2d 1144, 227 U.S.P.Q. 541 (Fed. Cir. 1985) ...... 26
L.C. Licensing Inc. v. Berman, 86 U.S.P.Q.2d 1883 (T.T.A.B. 2008) ...... 31
Lazzaroni USA Corp. v. Steiner Foods, No. Civ. 05–4476(JAG), 2006 WL 932345 (D.N.J. Apr. 11, 2006) ...... 32
Levitt Corp. v. Levitt, 593 F.2d 463, 201 U.S.P.Q. 513 (2d Cir. 1979) ...... 32
Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 84 U.S.P.Q.2d 1969 (4th Cir. 2007) ...... 38
In re Max Capital Grp. Ltd., 93 U.S.P.Q.2d 1243 (T.T.A.B. 2010) ...... 27, 33
McDonald’s Corp. v. McSweet, LLC, 112 U.S.P.Q.2d 1268 (T.T.A.B. 2014) ...... 40
NASDAQ Stock Market, Inc. v. Antartica S.r.l., 69 U.S.P.Q.2d 1718 (T.T.A.B. 2003) ...... 37
National Pork Bd. v. Supreme Lobster & Seafood Co., 96 U.S.P.Q.2d 1479 (T.T.A.B. 2010) ...... 37, 39
Nike, Inc. v. Maher, 100 U.S.P.Q.2d 1018 (T.T.A.B. 2011) ...... 36
iv 4848-3075-5457v.8 0096356-000028 Nike, Inc. v. Nikepal Int’l, Inc., 84 U.S.P.Q.2d 1820 (E.D. Cal. 2007) ...... 38
Nina Ricci, S.A.R.L. v. E.T.F. Enters., Inc., 889 F.2d 1070, 12 U.S.P.Q.2d 1901 (Fed. Cir. 1989) ...... 25, 26, 29, 35
Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 73 U.S.P.Q.2d 1689 (Fed. Cir. 2005) ...... 33
Perfumebay.com Inc. v. eBay, Inc., 506 F.3d 1165, 84 U.S.P.Q.2d 1865 (9th Cir. 2007) ...... 39
R.J. Reynolds Tobacco Co. v. R. Seeling & Hille, 201 U.S.P.Q. 856 (T.T.A.B. 1978) ...... 26
Recot, Inc. v. Becton, 214 F.3d 1322, 54 U.S.P.Q.2d 1894 (Fed. Cir. 2000) ...... 25, 26
Research in Motion Ltd. v. Defining Presence Mktg. Grp., Inc., 102 U.S.P.Q.2d 1187 (T.T.A.B. 2012) ...... 37
Specialty Brands Inc. v. Coffee Bean Distribs., 748 F.2d 669, 223 U.S.P.Q. 1281 (Fed. Cir. 1984) ...... 28
In re Thor Tech, Inc., 90 U.S.P.Q.2d 1634 (T.T.A.B. 2009) ...... 27
In re Toshiba Med. Sys. Corp., 91 U.S.P.Q.2d 1266 (T.T.A.B. 2009) ...... 33
UMG Recordings, Inc. v. Mattel, Inc., 100 U.S.P.Q.2d 1868 (T.T.A.B. 2011) ...... 36
Statutes
15 U.S.C. §§ 1051 et seq. (Lanham Act) ...... 22, 32 § 1057(b) ...... 22 § 1115(b) ...... 22 § 1125(c)(2)(A) ...... 35, 36 § 1125(c)(2)(B) ...... 38
Trademark Act of 1946 ...... 22
v 4848-3075-5457v.8 0096356-000028 Other Authorities
37 C.F.R. § 2.120(k) ...... 4, 5 § 2.120(k)(4) ...... 6 § 2.122(b)(1) ...... 3 § 2.122(d) ...... 3 § 2.122(e) ...... 4, 6 § 2.123...... 3, 5 § 2.125...... 3, 5
2018 Annual Report of Tapestry Inc., https://tapestry.gcs-web.com/static- files/0cdebad6-3861-46df-a515-07b4307a3ef5 ...... 11
Fed. R. Evid. 201(b)(2) ...... 11
vi 4848-3075-5457v.8 0096356-000028 I. PRELIMINARY STATEMENT
For a quarter of a century, Opposer, Kate Spade LLC (hereinafter “Opposer” or “Kate
Spade”), including its predecessors, has been a leader in accessible luxury. Founded in 1993 by
designer Kate Spade, the company produced practical and comparatively affordable handbags,
which possessed significant cachet and quickly established Kate Spade as an iconic American
brand. By the mid-to-late 1990s, the KATE SPADE “Sam” handbag was the “it bag”1 and, as one reporter noted, the KATE SPADE trademarks had “joined the status signature company of
Gucci’s double-Gs, Chanel’s double-Cs and Louis Vuitton’s LVs”.2 The KATE SPADE brand was almost immediately covered not only in fashion magazines such as Vogue, but mainstream press such as Vanity Fair, Wall Street Journal, Washington Post, The New York Times, and
Fortune.3
By 2013, Kate Spade’s net sales in the U.S. had grown from $137.5 million to $569.7
million4 in just five years, and it went from being known for its iconic handbags to a global lifestyle brand. In addition to bags, jewelry, shoes, sunglasses and watches, Kate Spade now produces a staggeringly broad and diverse selection of products, from fine china, glassware and other tabletop goods to tech accessories, stationery and thermal coffee mugs to furniture, home decor, bridal accessories, fragrances, hosiery, denim, children’s apparel and accessories, furniture, athleisure and ready-to-wear. Many credit the enormous success of the KATE SPADE brand to its ability to transcend geography, age and income level.5 The KATE SPADE trademarks, having been continuously used and registered in connection with 29 different product categories, as well as for retail store services, has acquired worldwide fame. This is not a
1 Plaintiff’s Trial Exhibit (“Pl. Tr. Ex.”) 17 at 10. 2 Pl. Tr. Ex. 19 at 4. 3 Pl. Tr. Ex. 19. 4 Pl. Tr. Ex. 24. 5 Pl. Tr. Ex. 17 at 8; Pl. Tr. Ex. 19 at 9.
1 4848-3075-5457v.8 0096356-000028 statement without support. Rather, at least one United States Court has recognized the fame and distinctiveness of the KATE SPADE house mark.6 Moreover, according to surveys commissioned by Kate Spade, the brand has enjoyed as high as 90 percent consumer awareness7 and various industry groups and publications in business, marketing, home goods, technology and fashion (to name a few) have recognized Kate Spade as one of the leading brands in each of these areas. It also is the opinion of consumers, who each year, have purchased hundreds of millions of dollars of KATE SPADE branded goods. The KATE SPADE marks have become part of the national fabric, appearing in or invoked by such popular television shows as Sex and the City, Gilmore Girls and Black-ish, featured in a wide variety of media, including the Wall
Street Journal, Rolling Stone Magazine, Vogue, O, The Oprah Magazine and Architectural
Digest and worn by celebrities, including Taylor Swift, Drew Barrymore, Anna Wintour, Julia
Roberts, Gwyneth Paltrow, Kate Middleton, and first daughter, Sasha Obama.
After the KATE SPADE trademarks had acquired fame and had exponentially increased in dollars of sales through retailers across the United States, Applicants, Thatch LLC (“Thatch”), owned and controlled by Kate Brosnahan Spade (“Brosnahan”), Andy Spade, and Elyce Arons and The Spades Trademark Company, LLC (“The Spades Trademark Company”)8, owned and controlled by Brosnahan and Andy Spade9, applied to register PATIO BY THE SPADES and
THE SPADES for goods identical to Kate Spade’s branded goods, including its core goods such as apparel and footwear in Class 25, handbags in Class 18, fragrance in Class 3, and jewelry in
Class 14 (Applicants’ marks PATIO BY THE SPADE and THE SPADES are collectively
6 Opposer’s Second Notice of Reliance (“Opp. 2nd NOR”), Ex. 93. 7 Pl. Tr. Ex. 32 at 15. 8 Thatch and The Spades Trademark Company are collectively referred to as “Applicants”. 9 20 TTABVUE 1; 50 TTABVUE 4 (Response to Interrogatory No.1).
2 4848-3075-5457v.8 0096356-000028 referred to as “THE SPADES Marks.”) The filings clearly were made with notice of and an intent to trade on Kate Spade’s fame.
As explained in detail below, the registration and use of Applicant’s THE SPADES
Marks are likely to cause confusion and/or dilute the famous KATE SPADE Marks.
Accordingly, judgment should be granted to Opposer, this Opposition should be sustained, and registration of Applicant’s THE SPADE Marks shown in Application Serial Nos. 86/179,137 and
85/932,097 should be refused.
II. THE RECORD
In addition to the file history of the opposed applications for THE SPADES Marks, which are automatically of record, pursuant to 37 C.F.R. § 2.122(b)(1), the following evidence is also of record:
A. Opposer’s Record
Opposer’s record consists of the following:
1. The trial testimony of i) Geri Elias, former Vice President and Intellectual
Property Counsel for Opposer, dated January 26, 2017 (“Elias Tr.”), including accompanying exhibits; and ii) Mary Beech, Chief Marketing Officer for Opposer, dated January 27, 2017
(“Beech Tr.”), including accompanying exhibits, pursuant to 37 C.F.R. §§ 2.123 and 2.125 and
TMBP § 703.01.
2. Opposer’s First Notice of Reliance, dated February 10, 2017 (“Opp. 1st NOR”), pertaining to status and title records for Opposer’s trademark registrations pursuant to 37 C.F.R.
§ 2.122(d) and TMBP § 704.03(b)(1).
3. Opposer’s Second Notice of Reliance, dated February 10, 2017 (“Opp. 2nd
NOR”), pertaining to documents Opposer filed with the Trademark Trial and Appeal Board, federal courts, and the World Intellectual Property Organization’s Arbitration and Mediation
3 4848-3075-5457v.8 0096356-000028 Center to enforce against third-party applications, registrations, and use of SPADE-formative marks pursuant to 37 C.F.R. § 2.122(e) and TMBP § 704.07.
4. Opposer’s Third Notice of Reliance, dated February 10, 2017 (“Opp. 3rd NOR”), pertaining to unsolicited advertisements of the KATE SPADE trademarks in periodicals pursuant to 37 C.F.R. § 2.122(e) and TMBP § 704.08.
5. Opposer’s Fourth Notice of Reliance (“Opp. 4th NOR”), dated February 10, 2017, pertaining to solicited media coverage and advertisement of Opposer’s trademarks in periodicals pursuant to 37 C.F.R. § 2.122(e) and TMBP § 704.08.
6. Opposer’s Fifth Notice of Reliance, dated February 10, 2017 (“Opp. 5th NOR”), pertaining to Applicants’ responses to Opposer’s Interrogatories Nos. 1, 6, 8, 9, 11 and 12 pursuant to 37 C.F.R. § 2.120(k) and TBMP § 704.10.
7. Opposer’s Sixth Notice of Reliance, dated February 10, 2017(“Opp. 6th NOR”), pertaining to excerpts from Opposer’s book, Kate Spade New York: Things We Love – Twenty
Years of Inspiration, Intriguing Bits and Other Curiosities, and additional unsolicited media coverage of Opposer’s trademarks in periodicals pursuant to 37 C.F.R. § 2.122(e) and TMBP
§ 704.08.
8. Opposer’s Seventh Notice of Reliance, dated February 10, 2017 (“Opp. 7th
NOR”), pertaining to Internet materials concerning Opposer’s trademark pursuant to 37 C.F.R. §
2.122(e) and TMBP § 704.08.
9. Opposer’s Eighth Notice of Reliance, dated February 10, 2017 (“Opp. 8th NOR”), pertaining to additional unsolicited advertisements of Opposer’s trademark in periodicals pursuant to 37 C.F.R. § 2.122(e) and TMBP § 704.08.
4 4848-3075-5457v.8 0096356-000028 10. Opposer’s Ninth Notice of Reliance, dated February 10, 2017 (“Opp. 9th NOR”),
pertaining to excerpts from the deposition testimony of Andy Spade, dated November 12, 2015,
pursuant to C.F.R. § 2.120(k) and TMBP § 704.10.
11. The oral cross-examinations of (i) Gabriel Mann, Director of Jack of Spades
Enterprises Inc., dated April 17, 2018, including accompanying exhibits; and (ii) Mehdi
Neyestanki, Chairman of the Board and Chief Executive Officer of Spade Skin Care & More
Inc., dated April 24, 2018, including accompanying exhibits, pursuant to 37 C.F.R. § 2.123 and
2.125 and TMBP § 703.01.
12. The rebuttal declaration of Orrin Falby, paralegal at the law firm of Davis Wright
Tremaine LLP (Opposer’s counsel), dated July 10, 2018, including accompanying exhibits, in lieu of oral testimony pursuant to 37 C.F.R. §§ 2.123 and 2.125 and TMBP § 703.01.
B. Applicants’ Record
Applicants’ record consists of the following:
1. The trial testimony of Elyce Arons, Managing Partner of Thatch, dated March 8,
2017, including accompanying exhibits, pursuant to 37 C.F.R. §§ 2.123 and 2.125 and TMBP
§ 703.01.
2. The declarations of (i) Nart-Anong Chinda, paralegal at Cowan, Liebowitz &
Latman, P.C. (Applicants’ counsel), dated April 10, 2017, including accompanying exhibits;
(ii) Mehdi Neyestanki, Chairman and Chief Executive Officer of Spade Skin Care & More, Inc., dated March 15, 2017, including accompanying exhibits; and (iii) Gabriel Mann, Director of
Jack of Spades Enterprises Inc., dated March 20, 2017, in lieu of oral testimony pursuant to 37
C.F.R. §§ 2.123 and 2.125 and TMBP § 703.01.
3. Applicants’ First Notice of Reliance, dated April 6, 2017 (“App. 1st NOR”), pertaining to trademark applications and registrations, print publication and Internet materials
5 4848-3075-5457v.8 0096356-000028 purporting to show third-party uses of SPADE or SPADES word marks and/or SPADE design marks pursuant to 37 C.F.R. § 2.122(e).
4. Applicants’ Second Notice of Reliance, dated April 7, 2017, pertaining to Internet materials and print publications for dictionary definitions of “spade” pursuant to C.F.R.
§ 2.122(e).
5. Applicants’ Third Notice of Reliance pertaining to the Answer to Petition to
Cancel filed by Narkonteks Tekstil Ithalat Sanayi Ve Ticaret Anonim Siketi pursuant to C.F.R.
§ 2.122(e).
6. Applicants’ Fourth Notice of Reliance pertaining to excerpts from the deposition testimony of Andy Spade, dated November 12, 2015, pursuant to C.F.R. § 2.120(k)(4).
7. Applicants’ Fifth Notice of Reliance pertaining to excerpts from i) the deposition testimony of Mary Beech, dated February 11, 2016; and ii) the deposition testimony Geri Elias, dated February 11, 2016, pursuant C.F.R. § 2.120(k)(4).
III. STATEMENT OF ISSUES
1. Whether THE SPADES Marks so resemble the KATE SPADE trademarks at issue that confusion, mistake, or deception is likely.
2. Whether THE SPADES Marks are likely to dilute the distinctive quality of the famous KATE SPADE trademark.
6 4848-3075-5457v.8 0096356-000028 IV. STATEMENT OF FACTS
A. The KATE SPADE Trademarks
1. History of the KATE SPADE Brand
In 1993, Brosnahan, frustrated that she could not find a handbag that was both
fashionable and utilitarian, began making handbags out of her apartment.10 She adopted her
marital name, Kate Spade, to serve as the trademark for her new venture. Her eponymous bags
quickly became successful, and she, together with her husband, Andy Spade and business
partners Elyce Arons and Pamela Bell, opened their first store in New York in 1996.11 They
filled the store with an assortment of other items, such as footwear, stationery, and tabletop
goods, and in doing so, began transforming the handbag brand into a lifestyle brand that would
revolutionize the fashion industry.12
In 1999, Brosnahan, her husband, and their partners sold a controlling interest (56%) of
their company to Neiman Marcus, which in turn, sold its shares to Liz Claiborne in 2006.13 In
2007, Brosnahan and her husband sold their stake in the company.14
In 2008, Deborah Lloyd (“Lloyd”) became chief creative officer, and she further
developed the brand to become a global, multichannel, lifestyle brand.15 Soon after her arrival,
the KATE SPADE brand grew exponentially. It introduced footwear and tabletop by 2007,
ready-to-wear apparel for adults in 2009, bridal in 2011, fragrances beginning in 2013 and kids’
apparel in 2015.16 Today, the KATE SPADE brand offers 29 product categories in the United
States and 20 plus countries around the world, including: jewelry; watches; wearable tech
10 Beech Tr. 12. (94 TTABVUE 22). 11 Beech Tr. 13 (94 TTABVUE 23); Pl. Tr. Ex. 17. 12 Pl. Tr. Ex. 17. 13 Id. 14 Beech Tr. 13, 37 (94 TTABVUE 23, 47). 15 Beech Tr. 13-22 (94 TTABVUE 23-32); Pl. Tr. Ex. 17. 16 Beech Tr. 17-22 (94 TTABVUE 27-32); Opp. 7th NOR, Ex. 265.
7 4848-3075-5457v.8 0096356-000028 (fitness trackers and smart watches); tech accessories (including phone covers, audio, earbuds and headphones, charging devices and small speakers for home); footwear; sleepwear; swimwear; legwear; loungewear; activewear; kids apparel and accessories; hair accessories; fragrances; home décor (including fabric, lighting, trim, furniture, rugs, bedding, bath and stationery); tabletop (including fine china, barware, place settings, casual dining and kitchen items); menswear under the JACK SPADE trademark; small leather goods; bridal; and ready-to- wear apparel (including dresses, separates, jackets, outerwear, skirts and pants).17 Under Lloyd’s leadership, Opposer also introduced its bridal products, which combines many product categories with specific designs that target brides.18 In addition, Opposer published several books – (i)
Things We Love; (ii) Kate Spade New York: Places To Go, People To See; (iii) Occasions and
Manners; (iv) Style; and (v) All in Good Taste – which are sold on, inter alia, Amazon and contribute to the KATE SPADE brand identity.19
Kate Spade has succeeded in extending its brand into different consumer markets and different product categories in large part through a number of strategic collaborations. Kate
Spade licensing partnerships have included, among others, Schwartz & Benjamin for footwear,
Safilo for eyewear, Lenox for tabletop, Elizabeth Arden for fragrances and Paperless Post for online stationery.20 For these licensees, the KATE SPADE brand has been a boom for their business. The KATE SPADE footwear division was Schwartz & Benjamin’s “biggest” brand, beating out licensing arrangements with Diane von Furstenberg and Rebecca Minkoff.21
Similarly, KATE SPADE by LENOX, Kate Spade’s tabletop brand, is the number one designer
17 Id. 18 Beech Tr. 20. 19 Beech Tr. 13, 78 (94 TTABVUE 23, 88); Opp. 6th NOR, Ex. 113 (54 TTABVUE 3-13); Opp. 7th NOR Exs. 284, 306, 346. 20 Pl. Tr. Ex. 17 at 28. 21 Id.
8 4848-3075-5457v.8 0096356-000028 license in the entire industry, and KATE SPADE eyewear is one of the top five performing
collections within Saflio’s brand portfolio within the United States.22 In addition, Kate Spade has
partnered with: (i) the Clinton Foundation to raise awareness of gender inequality and
International Women’s Day;23 (ii) Women for Women International to develop the “Hand in
Hand” collection to support women in war-torn countries such as Bosnia and Herzegovina and
Rwanda;24 (iii) celebrity stylist Brad Goreski, whose show, “It’s a Brad, Brad World,” premiered on the Bravo television network;25 (iv) wearable technology company, Everpurse, to develop
purses and handbags that wirelessly charge cellphones;26 (v) yoga company, Beyond Yoga, to
develop a limited-edition athletic-leisure wear collection;27 (vi) Magnolia Bakery to develop a
novelty collection of handbags inspired by desserts;28 (vii) GapKids to develop a limited-edition
collection for children;29 and (vii) Disney to develop a Minnie Mouse-inspired collection,30 just
to name a few.
Under Lloyd’s direction, Kate Spade ensured that for every product category it entered, it
offered an aesthetic that was distinct to the marketplace.31 Kate Spade’s motto – “Live
Colorfully”32-- embodies the look and feel of KATE SPADE products, which are consistently
playful, colorful, witty and whimsical.33 The enormous success of the KATE SPADE brand is
credited to its ability to transcend geography, age and income level.34
22 Id. 23 Opp. 7th NOR, Ex. 269. 24 Opp. 7th NOR, Ex. 327. 25 Opp. 7th NOR, Ex. 249. 26 Opp. 7th NOR, Ex. 287. 27 Opp. 7th NOR, Exs290, 318. 28 Id. 29 Opp. 7th NOR, Ex. 345. 30 Opp. 7th NOR, Ex. 313. 31 Beech Tr. 22. 32 Beech Tr. Ex. 20. (96 TTABVUE 81-101) 33 Beech Tr. Ex. 19 at 6. (96 TTABVUE 70) 34 Pl. Tr. Ex. 17 at 8; Pl. Tr. Ex. 19 at 9.
9 4848-3075-5457v.8 0096356-000028 2. Kate Spade’s Channels of Trade
Kate Spade sells its products online and in retail stores across the United States. Fifty- five percent of Kate Spade’s business is direct-to-consumer sales, through its own retail stores and website
Marcus, Macy's, Belks and Dillards. These third-party retailers sell KATE SPADE-branded merchandise in their retail locations and through their websites.37 Indeed, from at least 2011-
2014, Kate Spade’s top 15 domestic customers were these third-party retailers, such as
Nordstroms, Lord &Taylor, Bloomingdales, TJ Maxx, Macy’s, Dillards, Van Maur, Marshalls and Neiman Marcus.38 Kate Spade also sells its goods through online retailers, including Zappos and Amazon.39
3. Fame and Strength of the KATE SPADE Trademarks
a. Kate Spade’s Sales Figures
Kate Spade operates in the retail space referred to as “affordable luxury,” i.e., fashionable pieces offered at prices within the reach of working professionals, which also includes the brands
Coach, Michael Kors and Tory Burch.40 Kate Spade’s handbags sell for $198-$1200, clothes for
$295-1200, home décor for $20-14,000, jewelry for $58- 6,000, footwear for $98-600, kids for
35 Beech Tr. 41 (94 TTABVUE 51); Pl. Tr. Ex. 17. (96 TTABVUE 32) 36 Beech Tr. 33-35 (94 TTABVUE 43-45); Pl. Tr. Ex. 21 at 10. 37 Beech Tr. Ex. 17; Beech Tr. 18-22 (94 TTABVUE 28-32); Opp. 7th NOR. Exs. 296-308 (55 TTABVUE). 38 Beech Tr. Ex. 33 (98 TTABVUE 134-136); Opp. 7th NOR Exs. 301-305. 39 Beech Tr. 37 (94 TTABVUE 47); Opp. 7th NOR, Ex. 307. 40 Beech Tr. 104 (94 TTABVUE 114); Beech Tr. Ex. 17 (“[T]he brand can be aspirational for some, accessible luxury for others, and also fits well with the customer buying luxury products.”); Beech Tr. Ex. 19 (96 TTABVUE 75) (“[Kate Spade] is sold at a price point that’s accessible to shoppers who desire luxury brands but cannot afford them.”); Opp. 6th NOR, Ex. 117 (51 TTABVUE 3) (citing affordable luxury brands as Michael Kors, Tory Burch and Kate Spade).
10 4848-3075-5457v.8 0096356-000028 $48- 200, and fragrances for $50-100.41
In 2013 and 2014 (when Applicants first filed for THE SPADES Marks), Kate Spade’s
net sales of products bearing the KATE SPADE trademarks were $569.7 million and $848.6
million, respectively.42 One commentator for the Washington Post characterized Kate Spade’s
growth in sales over the course of this one-year period as “staggering.”43 In its most recent
public disclosure, Kate Spade identified net sales of the KATE SPADE brand globally totaling
$1.28 billion.44
b. Kate Spades Advertising and Promotion
Kate Spade has worked diligently to build brand recognition through its advertising and
promotional activities. Kate Spade has long advertised its products in a broad range of media,
including print, outdoor media, on demand video services and social media. From 1993 through
2013, Kate Spade had dedicated $39.6 million to advertise its goods bearing the KATE SPADE
trademark.45 That number increased significantly to $36.8 million in 2014.46 In 2017, marketing
expenses totaled approximately $60 million.47
Kate Spade has placed advertisements in over 70 widely circulated print and digital
editions of national publications, such as Vogue, InStyle, Marie Claire, Vanity Fair, Elle,
Harper’s Bazaar, Esquire, Glamour, and W, since 2012 through the present.48 In addition, it has
placed advertisements in regional magazines such as New York Magazine, Los Angeles Magazine
41 Beech Tr. 17-19, 21-22 (94 TTABVUE 27-29, 32-32); 42 Pl. Tr. Ex. 24. (97 TTABVUE 414-416) 43 Pl. Tr. Ex. 18. (96 TTABVUE 63) 44 See 2018 Annual Report of Tapestry Inc., located at URL https://tapestry.gcs-web.com/static-files/0cdebad6- 3861-46df-a515-07b4307a3ef5 at 38. Kate Spade requests that the Board take judicial notice of the referenced net sales, which is a fact that “can be accurately and readily determined from sources whose accuracy cannot reasonably be questioned.” See Fed. R. Evid. 201(b)(2). The amount of net sales can be found in such documents as Kate Spade’s annual report filed with the Securities and Exchange Commission. See https://tapestry.gcs-web.com/static- files/0cdebad6-3861-46df-a515-07b4307a3ef5. 45 Pl. Tr. Ex. 24. (97 TTABVUE 414-416) 46 Id. 47 Beech Tr. 48. 48 See Opp. 4th NOR, Exs. 101-111. (49 TTABVUE 19-190, 53 TTABVUE 3-45)
11 4848-3075-5457v.8 0096356-000028 and Ala Moana in Hawaii.49 Kate Spade’s national marketing campaigns have featured supermodels the likes of Karlie Kloss, Fernanda Ly and Jordan Dunn and celebrities such as
Bryce Howard and fashion icon Iris Apfel.50
Like many fashion brands, Kate Spade promotes its new fashion offerings by presenting them in a runway fashion show held at least twice a year.51 These fashion shows are attended by
celebrities, such as Zosia Mamet, Olivia Culpo and Jourdan Dunn and all major fashion media
outlets such as Vogue and Refinery29, Elle, InStyle, Fashionista, Harpers Bazaar, W Magazine
as well as new media outlets, including bloggers such as Man Repeller of Julia Engel, who have
millions of followers on Instagram, Twitter and other channels.52 Moreover, since 2016, Kate
Spade’s fashion shows have been live-streamed, including through Facebook Live.53
In addition, Kate Spade engages in outdoor advertising two to three times a year annually with the use of billboards in high-density and geographically diverse locations such as the SoHo neighborhood of New York City, the Sunset Boulevard in Los Angeles, Highland Village in
Houston Texas, and Charlotte, North Carolina.54
Over time, as consumer habits have shifted online, e-commerce became an increasingly important component of Kate Spade’s business. 55 Accordingly, Kate Spade has a robust
presence on the Internet. The number of visits to its online store,
20%-30% or more year over year, with even higher gains occurring in 2010 and 2011, the first
49 Beech Tr. 55. (94 TTABVUE 65) 50 Beech Tr. 79, 80 (94 TTABVUE 90-91); Opp. 7th NOR Exs. 248, 316 (55 TTABVUE 245; 56 TTABVUE 119- 124) 51 See Opp. 7th NOR, Exs. 251-261; Beech Tr. Ex. 17; Beech Tr. 72-76. (55 TTABVUE 260-287, 424-434); (96 TTABVUE 29-60); (94 TTABVUE 83-87) 52 Beech Tr. 76-79. (94 TTABVUE 87-90) 53 Beech Tr. 79. (94 TTABVUE 90) 54 Beech Tr. 54-55 (94 TTABVUE 64-65); Opp. 7th NOR, Exs. 268, 276. 55 Beech Tr. 55-57, 73 (94 TTABVUE 65-66, 83) (by 2016, 70% of marketing expenditures were allocated to digital advertisements).
12 4848-3075-5457v.8 0096356-000028 year of the website.56 This calculates roughly to
2011, 25.6 million visits in 2012, 32 million visits in 2013 and 40 million visits in 2014. Kate
Spade’s website at
million visits in 2016.57
Kate Spade also invests in digital advertisements geared to potential customers as they
browse third-party websites and maintains KATE SPADE branded pages on all the major social
media platforms, such as Facebook, Instagram, Pinterest, Twitter, Tumblr and Snapchat.58 By
2012, 499,000 people had liked Kate Spade’s KATE SPADE Facebook page.59 That number rose
to 771,000 in 2013, representing a 54% increase.60 On Twitter, Kate Spade had amassed 569,739
followers by 2014, a 90% increase from the year before.61 The gains of Instagram and Tumblr
have been even more impressive. By 2014, Kate Spade had experienced a 152% increase in the
number of followers on its Instagram page, totaling 540,180 followers, and a 156% increase in
the number of followers on its Tumblr page.62 By 2014, Kate Spade has 182,035 followers on
Pinterest and since 2014, KATE SPADE has been the number one fashion brand on Pinterest.63
In addition, since as early as 2011, Kate Spade has created over 100 short marketing
videos that it features on Kate Spade’s popular YouTube channel, which had approximately 1.5
million views in 2014.64 The content of the videos varies. Some videos feature a specific product,
such as a new handbag, watch or wearable technology.65 Other videos serve as instructional
56 Beech Tr. 42 (94 TTABVUE 52). 57 Beech Tr. 42 (94 TTABVUE 52). 58 Beech Tr. 69-71; Beech Tr. Ex. 28. 59 Id. 60 Id. 61 Id. 62 Id. 63 Beech Tr. 75-76. 64 Beech Tr. 58; see Opp. 7th NOR 278, 282-283. 65 Id.
13 4848-3075-5457v.8 0096356-000028 videos.66 Yet, other videos commemorate the launch of a new product category, like home decor.67
Perhaps most celebrated, however, are Kate Spade’s “shoppable” short films, referred to as the “MissAdventure” series, which premiered in 2014.68 The MissAdventure series features popular actresses, such as Anna Kendrick and Anna Farris, who bring to life the adventures of the “Kate Spade New York girl” – a rift on Kate Spade’s popular KATE SPADE NEW YORK trademark – a character, who is “optimistic, not perfect,” “turns lemons into lemonade” and
“views life as an adventure.”69 Many other noteworthy women have participated in the series as well, including: (i) Iris Apfel, a businesswoman, interior designer, and fashion icon; (ii) Gloria
Steinman, a feminist, journalist and social activist; (iii) Miss Piggy, the well-known Muppet character; and (iv) Zosia Mamet, an actress and musician.70
Not surprisingly, the videos have resonated with audiences. The MissAdventure series are featured not just on Kate Spade’s YouTube, Facebook, Instagram and Pinterest sites but also on television, through a partnership with Hulu, and on third party websites owned by US Weekly,
Salon, Food Network and Rolling Stone Magazine and other websites associated with Kate
Spade’s media partners, Refinery29, Hearst and Conde Nast.71 By December 2014, one month after the first episodes of the MissAdventure series had aired, the series already had reached 20 million YouTube viewers.72 By 2017, the videos had received over 150 million views in the
United States.73 Brand-tracking surveys have shown that consumers not only watch the films but
66 Id. 67 Id. 68 See Opp. 7th NOR, Ex. 279. 69 Id. 70 Beech Tr. 59-60; Opp. 7th NOR, Ex. 279. 71 Beech Tr. 59-60; Opp. 7th NOR, Ex. 281. 72 Opp. 7th NOR, Ex. 281. 73 Beech Tr. 62, 99-100.
14 4848-3075-5457v.8 0096356-000028 also have an “incredibly high levels of engagement and interest” with the stories.74 Indeed, the
level of brand awareness has increased since the release of the MissAdventure videos.75 The
MissAdventure series has also received favorable press coverage for their innovation; that is, the
films tell a story, similar to what is shown on television, that effectively embody the KATE
SPADE brand while also serving as a marketing campaign.76
c. Unsolicited Media and Publicity for the KATE SPADE Marks
Unsolicited media references to Kate Spade, its marks and its goods can be found in
practically all mainstream and local press (over 340 national and regional publications in print
and online), addressing everything from the history of the brand, fashion collections for the
brand, product launches for the brand, and events devoted to the brand.77 These extensive unsolicited media references continue to this date, but also clearly predate Applicant’s filing dates of May 2013 and January 2014.78 These media references reach tens, if not hundreds, of millions of readers annually. Kate Spade’s press coverage is diverse in its readership as it ranges from prominent general and business publications including Forbes, Wall Street Journal, The
New York Times, and the Boston Herald; to food publications including Bon Appetit, Food &
Wine, Food Network; to home and lifestyle publications including Architectural Digest, Better
Homes and Gardens, Chicago Tribune Life Style Sunday, Color Home, Elle Décor, Town &
Country, Traditional Home, Midwest Home and HGTV Magazine; to travel publications
including Conde Nast Traveler; to magazines dedicated to covering celebrities and pop culture,
such as People, Seventeen, and InStyle, US Magazine; to periodicals dedicated to covering the
fashion industry, such as Elle Fashion, Cosmo Girl, Cosmopolitan, Women’s Wear Daily, Cosmo
74 Id. 75 Id. 76 Beech Tr. 61-62; Opp. 7th NOR, Exs. 280, 281 77 See generally Opp. 7th NOR; Opp. 8th NOR, Opp. 6th NOR. 78 See, e.g., Opp. 6th NOR, Exs. 138-196.
15 4848-3075-5457v.8 0096356-000028 for Latinas, Vanity Fair and Teen Vogue; to publications covering women’s lifestyle and fitness such as O, The Oprah Magazine, Redbook, Real Simple, Essence, Women’s Health; to publications covering men’s lifestyle including Esquire, Men’s Health, Men’s Vogue; to bridal publications including Modern Bride, Martha Stewart Weddings, Bridal Guide, Destination
Weddings and Honey Moons; to regional publications including New York Magazine, Los
Angeles Magazine, Chicago Magazine, Las Vegas Magazine, Palm Beach Illustrated, Hamptons,
NY Daily News, NY Post, Page Six Magazine, St. Louis Magazine and Connecticut Cottage and
Gardens.79 Many more articles make mention of and recommend KATE SPADE products from
its over 29 different product lines.80
Socialites, models and actresses have all been photographed wearing clothing, footwear
and accessories and carrying bags bearing the KATE SPADE trademarks, including Taylor
Swift,81 Milly Bobby Brown82, Maisie Williams (Game of Thrones leading character while appearing on the Jimmy Kimmel Live show),83 Zooey Deschanel (lead in the television show, The
New Girl),84 Emily Blunt,85 Kerry Washington,86 Carley Rae Jepsen (singer of hit song, “Call Me
Maybe”),87 Bella Thorne (actress and Disney sitcom star),88 Emmy Rossum (star of television
series “Shameless”),89 Drew Barrymore,90 Eleanor Tomlinson (an actress known for her roles in
79 See Opp. 6th NOR, Exs. 114-207; Opp. 7th NOR, Exs. 212, 214-269; Opp. 8th NOR, Exs. 350-352. 80 See, e.g., Opp. 7th NOR, Exs. 338-344; Beech Tr. Ex. 25 at KSLLC00009975, KSLLC00009995; Beech Tr. Ex. 27 at KSLLC00009693, KSLLC00009705; Opp. 8th NOR, Ex. 350 at KSLLC00001777;Opp. 6th NOR, Exs. 118- 127, 130-135, 138-149. 81 Opp. 7th NOR, Exs. 291, 314; Beech Tr. Ex. 27 at KSLLC00009707. 82 Beech Tr. 80. 83 Opp. 7th NOR, Ex. 237 84 Opp. 7th NOR, Ex. 238; Pl. Tr. Ex. 27 at KSLLC00009717. 85 Opp. 7th NOR, Ex. 328 86 Opp. 7th NOR, Exs. 291, 329; Pl. Tr. Ex. 27 at KSLLC00009711-14. 87 Opp. 7th NOR, Ex. 330. 88 Opp. 7th NOR, Ex. 331. 89 Opp. 7th NOR, Ex. 332; Beech Tr. Ex. 27 at KSLLC00009709. 90 Opp. 7th NOR, Ex. 333.
16 4848-3075-5457v.8 0096356-000028 BBC hits such as Poldark and The White Queen),91 Hillary Kerr (co-founder and editorial
director of celebrity style and trend bible, Who What Wear),92 Solange Knowles, Anna Wintour,
Linda Wells (Allure magazine founder), Julia Roberts, Gwyneth Paltrow, Winona Ryder, Cindy
Crawford, Sandra Bullock, Ashley and Mary-Kate Olsen, Kate Middleton, Tina Fey and Rosario
Dawson.93 Photographs of these celebrities wearing or toting KATE SPADE products have appeared in prominent publications, such as US Magazine,94 People,95 and Instyle,96 to name a few, thereby expanding the exposure and recognition of the KATE SPADE Marks.
d. Press Acknowledging the Fame and Recognition of the KATE SPADE Marks
Recognizing the strength of the KATE SPADE brand in the digital arena, L2, Inc.
(“L2”)—recognized as the global standard for measuring digital competence and analyzes 1,250 data points across Site & E-Commerce, Digital Marketing, Social Media, and Mobile across different industries—has, since 2011, consistently ranked Kate Spade as one of the top six fashion brands.97 In 2013, for instance, L2 ranked Kate Spade’s “digital IQ” fourth among fashion brands, placing it above other popular brands, including TORY BURCH, COACH,
CALVIN KLEIN, MICHAEL KORS, GIORGIO ARMANI and LOUIS VUITTON.98 In 2011,
2012 and 2015, L2 ranked Kate Spade even higher, as one of the three top fashion brands in the
United States, and awarded it the highest rank of “genius.”99
The impact of Kate Spade’s marketing has also been recognized by other industry groups.
In 2016, the home decor industry awarded Kate Spade its Icon award in connection with its
91 Opp. 7th NOR, Ex. 334. 92 Opp. 7th NOR, Ex. 336. 93 Beech Tr. Ex. 26 at KSLLC0000937; Pl. Tr. Ex. 19. 94 Opp. 7th NOR, Ex. 314. 95 Beech Tr. Ex. 27 at KSLLC00009707, KSLLC00009709-14. 96 Beech Tr. Ex. 27 at KSLLC00009711. 97 Opp. 7th NOR, Ex. 213. 98 Beech Tr. 29-31; Beech Tr. Ex. 29. 99 Opp. 7th NOR, Ex. 213.
17 4848-3075-5457v.8 0096356-000028 launch of its kitchenware collection.100 Kate Spade has also been nominated for the Clio award,
an international award presented annually for high achievement in advertising, and the Cannes
Lion award, in recognition of creative excellence in the field of marketing.101
Notably, the success of the KATE SPADE brand has been covered extensively in feature
articles for the Washington Post, Forbes, The Wall Street Journal, Racked (a website covering
fashion) and Women’s Wear Daily,102 and the brand is repeatedly cited as a leading fashion brand. For instance:
in 2011, the American Apparel and Footwear Association (“AAFA”) awarded Kate Spade the “Lifestyle Brand of the Year” award in a “celebrity-filled event;”103
in 2013, Google ranked KATE SPADE the fifth most searched fashion brand on Google, just below GUCCI and ahead of RACHEL ZOE and GIVENCHY;104
in 2013, Business Insider named KATE SPADE one of the 50 best brands to follow on Twitter across all industries;105
in 2013, the NPD Group, Inc. (“NPD”)--one of the largest market research companies that obtains point of sale data to determine the ranking of various brands in various product categories--ranked Kate Spade as the number one brand for tabletop accessories; 106
in 2014, NPD ranked Kate Spade as the number one fashion brand in tech accessories (e.g., phone cases);107
in 2014, Forbes ranked KATE SPADE the eighth fastest growing fashion brand on Pinterest;108
in 2015, Goldman Sachs conducted a study that found KATE SPADE was the third most popular clothing brand among college-aged women, putting it ahead of MICHAEL KORS, COACH and TORY BURCH;109 and
100 Beech Tr. 31. (94 TTABVUE 41) 101 Id. 102 Beech Tr. Exs. 17-19; (Opp. 7th NOR, Ex. 215); (Opp. 6th NOR, Ex. 136). 103 Opp. 7th NOR, Ex. 293 (55 TTABVUE 387). 104 Opp. 7th NOR, Exs. 214, 218. 105 Opp. 7th NOR, Ex. 224. 106 Beech Tr. 43-44 (94 TTABVUE 53-54). 107 Beech Tr. 43-44 (94 TTABVUE 53-54). 108 Opp. 7th NOR, Ex. 225.
18 4848-3075-5457v.8 0096356-000028 in 2016, Icon Honors, the annual awards program that recognizes excellence in the home and gift industries, awarded Kate Spade its Icon award in connection with its launch of the KATE SPADE kitchenware collection.110
e. Cultural Significance and Other Evidence of Fame of the KATE SPADE Marks
Owing to the reputation and popularity of the KATE SPADE brand, it is often invoked and/or its products have been featured on such popular television shows such as Sex and the City,
Gilmore Girls, Black-ish, The Mindy Project, Riverdale and The New Girl.111
Mainstream media has covered Kate Spade regularly. For example, in 2003, The New
York Times quipped that, “If Dorothy Parker [née Rothschild, an American poet, writer, critic,
and satirist based in New York] were a product, she would be a Kate Spade clutch.”112 Fortune noted that anything with a Kate Spade label “signifies sophistication, freshness, and impeccable good taste, all rolled into one.”113 By 2006, the Wall Street Journal reported the company was enjoying $99 million in annual revenue and noted that “[w]hen two women met and saw they were both holding Kate Spade bags, they’d nod at each other and understand they were on the same page. It was very chic.” 114
Perhaps even more significantly, Kate Spade has been associated with political “royalty.”
Kate Spade has also become a favorite amongst the British royal family, with both Kate and
Pippa Middleton sporting many Kate Spade pieces, from dresses to earrings and bags.115 Even
109 Opp. 7th NOR, Ex. 219. 110 Beech Tr. 31. 111 Beech Tr. 80; Pl. Tr. Ex. 80. 112 Pl. Tr. Ex. 19. 113 Id. 114 Id. 115 See https://www.elle.com/culture/a24027268/pippa-middleton-first-outing-since-giving-birth/ https://www.msn.com/en-us/lifestyle/lifestyle-buzz/the-comfortable-and-cute-sneakers-pippa-middleton-just-wore- three-times-in-a-row/ar-BBOcJBx; https://www.foxnews.com/lifestyle/how-kate-spades-designs-contributed-to-pop- culture
19 4848-3075-5457v.8 0096356-000028 the newest royal, Meghan Markle, has been spotted wearing the KATE SPADE brand.116 Last year, Pippa wore a number of Kate Spade dresses while on her honeymoon in Australia, including this navy and white striped sundress.117 Sasha Obama wore KATE SPADE to her father’s, President Obama’s, second inauguration in 2012.118
As popular as the KATE SPADE brand is in fashion, media and entertainment, it is no surprise that Kate Spade has gained an enormous following of fans. One woman started a blog inspired by KATE SPADE’s collections, called the “Katespadegirl.”119 A couple, inspired by the bride’s collection of KATE SPADE dresses, threw a pink, KATE SPADE-inspired wedding, incorporating “modern, playful patterns” that was featured in Martha Stewart Weddings.120 Out of the nearly 50 Pinterest boards dedicated to the KATE SPADE brand, individual women tracking the KATE SPADE trends have created approximately more than half of them.121 This does not even take into account the Pinterest boards not solely dedicated to KATE SPADE but feature the KATE SPADE brand. One example is a Pinterest board featuring images from the user’s favorite magazine and billboard advertisements that includes a high number of KATE
SPADE marketing campaigns.122
Moreover, the court in Kate Spade LLC v. Saturdays Surf LLC, 950 F. Supp. 2d 639, 645
(S.D.N.Y. 2013), recognized that KATE SPADE was a “famous house mark”, stating “the Kate
Spade name is very much entrenched in the fashion marketplace.”123 Even Applicants admit that the KATE SPADE Marks are “recognized and relied upon by the public and trade as identifying
116 Id. 117 Id. 118 Beech Tr. Ex. 17 at 6; Opp. 7th NOR, Ex. 227; Pl. Tr. Ex. 27 at KSLLC00009736 119 See https://katespadegirl.com/. 120 See Opp. 7th NOR, Ex. 239; see also https://www.marthastewartweddings.com/412929/california-darlington- house-modern-pink-wedding-acqua-photo?slide=792157 (slides 1 and 12). 121 Opp. 7th NOR, Ex. 323. 122 Opp. 7th NOR, Ex. 324. 123 Id. (emphasis added).
20 4848-3075-5457v.8 0096356-000028 [Kate Spade’s] goods and related services and distinguishing them for [sic] the goods and services of others and have come to represent and symbolize extremely valuable goodwill and a widespread reputation belonging exclusively to [Kate Spade].”124
f. Market Research Demonstrates the Fame of the KATE SPADE Marks
Several surveys commissioned by Kate Spade have demonstrated a high level of consumer recognition of the KATE SPADE Marks. Kate Spade annually recruits outside agencies to conduct market surveys to measure aided awareness of the KATE SPADE brand – i.e., the participant giving an affirmative answer when asked if she has heard of KATE SPADE – and unaided awareness of the KATE SPADE brand – i.e., the participant names KATE SPADE when asked the first fashion brand that comes to mind.125 Kate Spade has performed considerably well in both areas. In a June 2013 survey, 71% of survey participants recognized the KATE SPADE brand.126 That number rose to 89% and 90% in November 2014 and
December 2016, respectively.127 Even in tests of unaided awareness, which sets an appreciably more difficult test for brands to meet, survey participants named KATE SPADE as the first fashion brand that came to mind in 9% of instances in November 2014.128 That result equaled or exceeded the unaided awareness of other popular fashion brands, such as LOUIS VUITTON,
LEVIS GUESS, EXPRESS, ANN TAYLOR and NIKE, during the same period, and exceeded unaided awareness of popular fashion brands PRADA, CHANEL and H&M from a few months earlier in April 2014.129
124 9 TTABVUE 5 (Answer to para. 5). 125 Beech Tr. 83-91; Beech Tr. Ex. 31-32. 126 Beech Tr. 89-91; Beech Tr. Ex. 32 127 Id. 128 Beech Tr. 124-125, 250. 129 Id.
21 4848-3075-5457v.8 0096356-000028 4. Registration of the KATE SPADE Trademarks
Kate Spade first registered the KATE SPADE Mark in 1997, and now owns 59 U.S. registrations consisting of or including KATE SPADE or its functional design equivalent, the
SPADE Design (the “KATE SPADE Marks”).130 Of these registrations consisting of or including the KATE SPADE, 33 issued before Applicant filed the THE SPADES applications, and of those, 24 are incontestable under S15 U.S.C. §§ 1051 et seq., ection 15 of the United
States Trademark Act of 1946, as amended (the “Lanham Act”), 15 U.S.C. §§ 1057(b), 1115(b).131
5. Kate Spade’s Policing Efforts and Findings of Fame
Of course, along with the fame of the KATE SPADE mark comes attempts by third parties to unlawfully trade on that fame. Kate Spade actively polices the marketplace to put a stop to infringing activity as quickly as possible. At the time Kate Spade commenced its oppositions, Kate Spade’s Vice-President and Intellectual Property Counsel, Geri Elias, oversaw
Kate Spade’s enforcement activities as one of her primary responsibilities.132 In her role, she worked closely with at least three members of Kate Spade’s security team as well as outside vendor Mark Monitor (a leader in brand protection services), who scoured the Internet on a daily basis looking for any infringements of the KATE SPADE mark.133 Together, Elias and the security team were vigilant in protecting the strength, goodwill, and value derived from consistent and correct use of the KATE SPADE Marks by preventing the use of the confusingly similar marks by third parties. Notably, Kate Spade has had great success enforcing its rights in
130 See Opp. 1st NOR, Exs. 1-73. 131 See id. 132 Elias Tr. 15-16. 133 Elias Tr. 19-20.
22 4848-3075-5457v.8 0096356-000028 the KATE SPADE Marks in numerous opposition and cancellation proceedings before the Board and has pursued Federal Court litigation against third parties. By 2014, Kate Spade had enforced against over 1,000 websites, sent cease and desist notices to over 5,900 websites, successfully cancelled a registration for a SPADE mark by a third party, successfully opposed a third-party application to register the mark KATE & CO. and successfully pursued at least two federal actions against counterfeiters.134
B. Applicants’ Marks
Applicants are owned and controlled, at least in part, by Brosnahan (before her passing) and Andy Spade.135 On May 14, 2013, Applicants applied to register PATIO BY THE SPADES for “handbags, all purpose carrying bags, tote bags, traveling bags, backpacks, wallets and cosmetic bags sold empty)” in Class 18 and “clothing, namely dresses, pants, tops, shirts, blouses, sweaters, sleepwear, pajamas, beach cover ups, scarves, gloves, jackets, hats and caps; footwear, namely shoes, sandals and boots” in Class 25. On January 29, 2014, the Applicants, if four separate applications, sought to register THE SPADES, for hats; jackets; jeans; leather jackets; pajamas; pants; robes; scarves; shirts; shoes; shorts; socks; sweaters; t-shirts; and underwear in Class 25, handbags in Class 18, jewelry in class 14 and fragrance in Class 3. Of
THE SPADES applications, only the Class 3 application is a subject of this opposition. The remaining applications are currently suspended.
Though Applicants have not used the THE SPADES marks in commerce yet, they have formulated some business plans. They intend to sell, promote and distribute goods using THE
SPADES marks in department stores such as Bergdorf Goodman, Neiman Marcus, Saks Fifth
134 Opp. 2nd NOR Exs. 85, 87, 90, 91; Pl. Tr. Ex. 1. 135 20 TTABVUE 1; 50 TTABVUE 4 (Response to Interrogatory No.1).
23 4848-3075-5457v.8 0096356-000028 Avenue and Bloomingdales, among others.136 They intend to target a female consumer between the ages of 25 and 45 years old.137 Further, they intend to sell, promote and distribute goods in all major cities.138
V. ARGUMENT
A. THE SPADES Marks Create a Likelihood of Confusion with Kate Spade’s KATE SPADE Marks
1. Kate Spade Has Prior Rights in the KATE SPADE Marks
Priority is not an issue in these proceedings due to Kate Spade’s numerous valid and subsisting registrations for the KATE SPADE Marks.139 Kate Spade accordingly has the right to exclude others, such as Applicants, from registering a confusingly similar mark, particularly where that mark is registered for goods that are identical to those offered under the KATE
SPADE Marks.
2. Applicants’ Marks are Confusingly Similar to the KATE SPADE Marks
Likelihood of confusion is determined on a case-by-case basis through consideration of the factors identified in DuPont, namely: (i) the similarity of the marks in their entireties as to appearance, sound, connotation and commercial impression; (ii) the similarity and nature of the parties’ goods or services; (iii) the similarity of established and likely-to-continue trade channels;
(iv) the conditions under which the goods are purchased and to whom sales are made; (v) the fame of the prior mark; (vi) the number and nature of similar marks in use on similar goods; (vii) the nature and extent of any actual confusion; (viii) the length of time under which there has been concurrent use without evidence of actual confusion; (ix) the variety of goods on which a mark is or is not used; (x) the market interface between applicant and the owner of the prior
136 Opp. 5th NOR, Ex. 112 (Interrogatory No. 9). 137 Opp. 5th NOR, Ex. 112 (Interrogatory No. 8). 138 Opp. 5th NOR, Ex. 112 (Interrogatory No. 12). 139 See supra Section IV.A.5
24 4848-3075-5457v.8 0096356-000028 mark; (xi) the extent to which an applicant has the right to exclude others from use of its mark on
its goods; (xii) the extent of potential confusion; and (xiii) any other established fact probative of
likelihood of confusion.140 The likelihood of confusion analysis considers all DuPont factors for which there is evidence of record, but the relevance and weight to be given to various factors may differ from case-to-case.141
It is well settled that if the issue of likelihood of confusion is in doubt, the question should be resolved in favor of the senior user, especially where, as here, the established mark is famous.142 Even without the benefit of this presumption, likelihood of confusion in this case is inescapable. The KATE SPADE Marks are famous marks that are entitled to a wide degree of protection. Applicants acted in bad faith by intentionally adopting marks that are similar to the famous KATE SPADE Marks, intending to use them on goods identical to the goods for which
Kate Spade is famous, for no purpose other than trading on the fame of the KATE SPADE
Marks. The Board should prevent Applicants from effectuating their bad faith scheme and refuse to register THE SPADES Marks.
a. The KATE SPADE Marks are Famous and Entitled to a Broad Scope of Protection
When a plaintiff possesses a famous mark, this fact “plays a ‘dominant’ role in the process of balancing the DuPont factors.”143 Fame is important because consumers are more likely to remember a famous mark, and consequently are more likely be to be confused when someone adopts a similar mark.144 The Board has long recognized “the tendency of the consuming public to associate a relatively unknown mark with one to which they have long been
140 In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361, 177 U.S.P.Q. 563 (C.C.P.A. 1973). 141 Id. at 1361-62. As related to the instant case, the seventh and eighth DuPont factors are not relevant here since Applicants have not yet used THE SPADES Marks 142 Nina Ricci, S.A.R.L. v. E.T.F. Enters., Inc., 889 F.2d 1070, 1074, 12 U.S.P.Q.2d 1901 (Fed. Cir. 1989). 143 Recot, Inc. v. Becton, 214 F.3d 1322, 1327, 54 U.S.P.Q.2d 1894 (Fed. Cir. 2000); see also Hard Rock Café Int’l (USA), Inc. v. Elsea, 56 U.S.P.Q.2d 1504, 1512 (T.T.A.B. 2000). 144 Bose Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 1371, 63 U.S.P.Q.2d 1303 (Fed. Cir. 2002).
25 4848-3075-5457v.8 0096356-000028 exposed if the mark bears any resemblance thereto.”145 A famous mark “casts a long shadow
which competitors must avoid.”146
The fame of a trademark may be proven by the volume of sales and advertising
expenditures, the length of the use of the mark, and widespread unsolicited media attention.147
Importantly, a large volume of sales and the expenditure of large amounts on advertising are
sufficient, without more, to prove that a mark is famous because they show that a large number
of consumers have been exposed to the marks through purchases and/or advertisements.148 For
example, the Federal Circuit has held: (1) Bose Corp.’s ACOUSTIC WAVE trademark is
famous for loudspeaker systems based on 17 years of use, annual sales over $50 million, annual
advertising over $5 million, and extensive media coverage, and Bose’s WAVE mark is famous
based on use for 9 years, annual sales of over $100 million, $60 million spent in total on
advertising since launch, and many press references;149 (2) the NINA RICCI trademark is famous
for perfume, clothing and accessories based upon over 27 years of use, over $47 million
advertising expenditures, and $215 million in sales;150 and (3) the HUGGIES trademark is
famous for diapers based on over $300 million in sales and $15 million in advertising in one
year.151
Evidence supporting the fame of the KATE SPADE Marks is of the same caliber as the
evidence submitted in the above-referenced cases where the marks were deemed famous. Kate
Spade has been in use on up to 29 categories of goods for 25 years and has garnered widespread
145 R.J. Reynolds Tobacco Co. v. R. Seeling & Hille, 201 U.S.P.Q. 856, 860 (T.T.A.B. 1978). 146 Recot, 214 F.3d at 1328 (quoting Kenner Parker Toys Inc. v. Rose Art Indus., 963 F.2d 350, 353, 22 U.S.P.Q.2d 1453 (Fed. Cir. 1992)); see also Hard Rock Café Int’l (USA), 56 U.S.P.Q.2d at 1512. 147 Bose Corp., 293 F.3d at 1371. 148 Id. at 1371, 1375. 149 Id. at 1371-73. 150 Nina Ricci, 889 F.2d at 1072, 1074. 151 Kimberly-Clark Corp. v. H. Douglas Enters., Ltd., 774 F.2d 1144, 1145, 227 U.S.P.Q. 541 (Fed. Cir. 1985).
26 4848-3075-5457v.8 0096356-000028 unsolicited media attention.152 Additionally, by any measure, the volume of goods sold under the
KATE SPADE Marks (from $569.7 million in 2013, to $848.6 million in 2014 to global sales of
$1.28 billion in 2017), 153 and the amount spent to promote those marks ($36.8 million through
2014 and $60 million in 2017)154 are sufficient to support fame. Even Applicants admit that the
KATE SPADE Marks have come to represent and symbolize extremely valuable goodwill and a
widespread reputation belonging exclusively to [Kate Spade],”155 and as discussed above, at least
one other court has recognized KATE SPADE as a famous trademark.156
That the KATE SPADE Marks are famous cannot be disputed and weighs very heavily in
favor of a finding of likely confusion.
b. The Parties’ Marks are Similar in Appearance and Create the Same Commercial Impression and the Parties’ Goods or Services are Identical
Although the weight given to the relevant DuPont factors may vary, two factors—the
similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation
and commercial impression and the relatedness of the goods or services as described in the
application and registration(s)—are key considerations in any likelihood of confusion
determination.157 As discussed below, these two DuPont factors strongly favor Kate Spade.
When assessing the similarity of marks, the question is not whether the marks are
distinguishable, but rather whether the marks have a sufficiently similar commercial impression
that consumers are likely to assume that the junior user’s goods are associated with the senior
152 See discussion at Section IV(A)(3), infra. 153 See Section IV(A)(3)(a), supra. 154 See Section IV(A)(3)(b), supra. 155 9 TTABVUE 5 (Answer to para. 5)(emphases added). 156 See Section IV(5), supra. 157 See, e.g., Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 U.S.P.Q. 24, 29 (C.C.P.A. 1976); In re Iolo Techs., LLC, 95 U.S.P.Q.2d 1498, 1499 (T.T.A.B. 2010); In re Max Capital Grp. Ltd., 93 U.S.P.Q.2d 1243, 1244 (T.T.A.B. 2010); In re Thor Tech, Inc., 90 U.S.P.Q.2d 1634, 1635 (T.T.A.B. 2009).
27 4848-3075-5457v.8 0096356-000028 user.158 For example, in Hard Rock Café Int’l v. Elsea, the Board held that the defendant’s mark,
COUNTRY ROCK CAFE, was confusingly similar to the plaintiff’s famous HARD ROCK
CAFE mark, despite the obvious differences in the marks’ first words. The Board reasoned that consumers familiar with the clothing items sold by the plaintiff would likely assume that the clothing sold by the defendant came from or is sponsored by the plaintiff, even if consumers recognize that one mark starts with HARD ROCK and the other starts with COUNTRY
ROCK.159
The similarities among the marks are highly likely to lead consumers to assume that
Applicants’ goods emanate from or are associated with Kate Spade:
Opposer’s Marks Applicant’s Marks
KATE SPADE THE SPADES
PATIO BY THE SPADES
KATE SPADE NEW YORK
Notably Applicant’s marks contain a derivative of SPADE, which is a dominant and
unifying feature in all of the KATE SPADE Marks. As the Federal Circuit noted in Bose Corp. v.
QSC Audio Products, courts have repeatedly held that a likelihood of confusion exists where “a
competing mark shares a core portion” of the plaintiff’s mark.160
158 Hard Rock Café Int’l (USA), 56 U.S.P.Q.2d at 1513. 159 Id.; see also Hewlett-Packard v. Packard Press, Inc., 281 F.3d 1261, 1266, 62 U.S.P.Q.2d 1001 (Fed. Cir. 2002) (“[E]ven though Packard Press’s PACKARD TECHNOLOGIES mark does not incorporate every feature of the HEWLETT PACKARD marks, the marks create a similar overall commercial impression.”); Specialty Brands Inc. v. Coffee Bean Distribs., 748 F.2d 669, 673, 223 U.S.P.Q. 1281 (Fed. Cir. 1984) (“It is the similarity of commercial impression between SPICE VALLEY and SPICE ISLANDS that weighs heavily against the applicant as applied to identical goods.”); Gianni Versace, S.p.A. v. Versace 19.69 Abbigliamento Sportivo SRL, 328 F. Supp. 3d 1007, 1014-21 (N.D. Cal. 2018) (granting summary judgment to plaintiff due to likely confusion between GIANNI VERSACE and VERSACE 19.69 ABBIGLIAMENTO SPORTIVO, S.R.L.). 160 293 F.3d at 1378 (citing the following as examples of where confusion was found: AQUA–CARE and WATER– CARE, BEER NUTS and BREW NUTS, BLUE SHIELD and RED SHIELD, GENTLE TOUCH and KIND
28 4848-3075-5457v.8 0096356-000028 The similarity among the parties’ marks is exacerbated by other factors. First, Brosnahan
and Andy Spade are often referred to as “the Spades”.161 This is in keeping with a practice in the
fashion industry to use last names as trademarks, e.g., GUCCI, FENDI, VALENTINO,
CHANEL and LAUREN (even as it also uses RALPH LAUREN). In the case of Nina Ricci,
S.A.R.L. v. E.T.F. Enterprises,162 the Federal Circuit cited this custom in holding that the mark
VITTORIO RICCI was confusingly similar to NINA RICCI. The court recognized that the last
name RICCI was the unifying feature in the plaintiff’s marks (NINA RICCI, MADEMOISELLE
RICCI, SIGNORICCI, CAPRICCI); consequently, the defendant’s adoption of the mark
VITTORIO RICCI was likely to cause consumers to assume that the defendant’s goods came
from the plaintiff and the presence of the name VITTORIO at the start of the defendant’s mark
did not mitigate the risk of confusion.163
Significantly enhancing the risk of confusion, Applicants intend to use THE SPADES
Marks in connection with goods that are identical to those covered by the registrations for the
KATE SPADE Marks. “When marks would appear on virtually identical goods or services, the
degree of similarity necessary to support a conclusion of likely confusion declines.”164
Applicants seek to register PATIO BY THE SPADES for handbags and related Class 18
luggage and bags, PATIO BY THE SPADES for apparel and footwear in Class 25, and THE
SPADES for fragrance in Class 3. Handbags, including Class 18 goods are identical to those
listed in at least the following registrations for the KATE SPADE Marks: KATE SPADE (Reg.
2068911); KATE SPADE (Reg. 2064708); KATE SPADE NEW YORK (Reg. 2537318); and
TOUCH, MANPOWER and WOMANPOWER, DOWNTOWNER and UPTOWNER, WEED EATER and LEAF EATER, THERMO KING and ZERO KING). 161 Pl. Tr. Ex. 19 at 14. 162 889 F.2d at 1073. 163 Id.; see also Gucci v. Gucci Shops, Inc., 688 F. Supp. 916, 925, 7 U.S.P.Q.2d 1833 (S.D.N.Y. 1988) (PAOLO GUCCI and GUCCI marks likely to be confused). 164 Hard Rock Café Int’l (USA), 56 U.S.P.Q.2d at 1512.
29 4848-3075-5457v.8 0096356-000028 KATE SPADE NEW YORK & Design of Spade (Reg. 4155450).165 The apparel and footwear
overlap with the clothing items in at least the following registrations for the KATE SPADE
Marks: KATE SPADE (Reg. 2578942); KATE SPADE NEW YORK (Reg. 2613247); KATE
SPADE NEW YORK & Design of Spade (Reg. 4155451).166 Finally, fragrance products are
identified in six of the registrations for the KATE SPADE Marks, including the following:
KATE SPADE, for “cologne, cologne spray, perfumes” (Reg. 2724972), KATE SPADE NEW
YORK, for “fragrances and perfumery,” among other goods (Reg. 3955827), and KATE SPADE
NEW YORK & Design of Spade for “fragrances,” among other goods (Reg. 4522233).167 And of
course, the goods Applicants identified in their applications are closely related to the cosmetics,
eyewear, jewelry, watches, key rings, retail sales of handbags, and other goods and services
covered by registrations for the KATE SPADE Marks (see, e.g., Regs. 2522892, 4158328,
4158410, 4155452, 2905861, 3095754, 2654803, 2956539, 3092920).168
c. The Parties’ Goods Are Sold To the Same Consumers and Through The Same Channels of Trade
Because the parties’ marks will appear on identical goods, it is presumed that the same
consumers will be exposed to the parties’ marks and that the goods travel through the same trade
channels.169 Moreover, Applicants admitted that they intend to target some of the same
consumers—women aged 24-45—and to sell their goods in the same major department stores—
165 See Opp. 1st NOR, Exs. 1-2, 10, 32. 166 See Opp. 1st NOR, Exs. 4, 8, 33. 167 See supra Section IV.A.5. 168 Id. 169 Hewlett-Packard Co., 281 F.3d at 1268 (“As this court has previously stated, absent restrictions in the application and registration, goods and services are presumed to travel in the same channels of trade to the same class of purchasers.”).
30 4848-3075-5457v.8 0096356-000028 such as Bloomingdales and Neiman Marcus—as Kate Spade. 170 This is yet another DuPont
factor that weighs in favor of a finding of likelihood of confusion.
d. Applicants Prior Association with the KATE SPADE Marks Enhances the Likelihood of Confusion
The DuPont factors recognize that a junior user’s relationship with the senior user and its marks enhances the likelihood of confusion, requiring courts to consider evidence such as whether the parties had an agreement with “provisions designed to preclude confusion,” and the junior user’s assignment of a relevant mark, its registration, and good will.171
Here, Applicants, who were the founders and a namesake of the KATE SPADE Marks.
Their adoption of the KATE SPADE Marks gives rise to an inference that they intended to
deceive consumers, which is, accordingly, strong evidence that a likelihood of confusion
exists.172
Applicants were indisputably familiar with the KATE SPADE Marks when they adopted
THE SPADES Marks.173 As stated above, Brosnahan and Andy Spade known to the public as
“the Spades”. Moreover, as Beech stated, because Brosnahan and Andy Spade were and are
well-known people, they are more likely to receive infusions of equity and press.174 It is for these
very reasons that Kate Spade entered into an agreement with Brosnahan whereby Brosnahan
agreed to “not intentionally take any actions which are likely to cause consumer confusion.”175
170 Opp. 5th NOR, Ex. 112 (Responses to Interrogatory Nos.8, 9) (50 TTABVUE 11)); Pl. Tr. Ex. 33; Pl. Tr. Ex. 17 at 8; Pl. Tr. Ex. 19 at 9. 171 DuPont, 476 F.2d at 1361. 172 See L.C. Licensing Inc. v. Berman, 86 U.S.P.Q.2d 1883, 1891 (T.T.A.B. 2008) (bad faith adoption of a mark is strong evidence that confusion is likely because an inference may be drawn from the imitator’s expectation of confusion); Broadway Catering Corp. v. Carla Inc., 215 U.S.P.Q. 462, 465 (T.T.A.B. 1982) (“One’s wrongful intent to trade on the trademark or trade name of another is strong evidence that confusion is likely. Such inference is drawn from the imitator’s own expectation of confusion as to the source of his product.”). 173 See, e.g., Pl. Tr. Ex. 17 at 14 (recounting how Brosnahan chose the name KATE SPADE for her brand because it had a “better ring to it”). 174 Beech Tr. 156-157. 175 Elias Tr. 135-136; Def. Tr. Ex. 1.
31 4848-3075-5457v.8 0096356-000028 Moreover, courts have repeatedly recognized that where individuals sell the trademark rights in their surname but then later try to use the surname as a trademark to compete with the purchaser, creates a risk of confusion.176 In Levitt Corp. v. Levitt,177 the founder of the entity
Levitt and Sons sold his rights in the LEVITTOWN trademark for residential communities in
New York and Pennsylvania and subsequently helped start a new venture to build a community
named “Levittown Florida” by “Levitt and Sons.” The Second Circuit affirmed an injunction
against these activities, holding that where a “seller has attempted to arrogate to himself the trade
reputation for which he received valuable consideration, broad remedies may be effected to
restore to the plaintiff the value of his purchase.”178
The principles articulated in the Levitt decision were subsequently applied in JA Apparel
Corp. v. Abboud, a case involving the clothing designer Joseph Abboud.179 The Second Circuit
had little difficulty in concluding that the designer could not use his name as a trademark, as such
use was likely to cause confusion.180 On remand, the trial court held that “Abboud’s use of his
name in the sale of clothing will inevitably lead to consumer confusion,” and permanently
176 See, e.g., JA Apparel Corp. v. Abboud, 568 F.3d 390, 400, 91 U.S.P.Q.2d 1095 (2d Cir. 2009), on remand, 682 F. Supp. 2d 294 (S.D.N.Y. 2010); Levitt Corp. v. Levitt, 593 F.2d 463, 201 U.S.P.Q. 513 (2d Cir. 1979); JL Powell Clothing LLC v. Powell, No. 2:13-cv-00160-NT, 2014 WL 347249 (D. Me. Jan. 30, 2014) (barring individual from using his name in a competing clothing business after he had sold rights), amended by 2014 WL 12539686 (D. Me. Dec. 17, 2014) (clarifying scope of injunction); Equibrand Corp. v. Reinsman Equestrian Prods., No. 3:07–cv– 0536, 2007 WL 1461393, at *13 (N.D. Tex. May 17, 2007) (holding that a likelihood of confusion exists if defendant used his name, which he had already sold, in connection with the sale of competing products); Lazzaroni USA Corp. v. Steiner Foods, No. Civ. 05–4476(JAG), 2006 WL 932345 (D.N.J. Apr. 11, 2006) (enjoining efforts by a family, which had sold the use of their surname as a mark for macaroons, to use name on competing macaroons). 177 593 F.2d 463. 178 Id. at 468. 179 568 F.3d at 400., 180 Id. Accord 682 F. Supp. 2d at 309. Since the courts easily concluded that trademark use of ABBOUD by Mr. Abboud was not permitted, the courts’ analysis of the Lanham Act claims focused on whether Mr. Abboud’s references to his name in advertisements constituted descriptive, non-trademark uses of his name. 568 F.3d at 400- 03; 682 F. Supp. 2d at 309-16.
32 4848-3075-5457v.8 0096356-000028 enjoined Abboud from using his name in direct connection with the clothing items, i.e., the name was not permitted to appear on clothes, labels, hang tags, or packaging.181
Applicant’s prior association and intent to trade upon the KATE SPADE Marks also favors a finding of infringement.
e. Kate Spade’s Consumers Are Considered General Consumers Under the Relevant Caselaw
The parties’ goods fall in the “affordable luxury” category of the fashion market.182
Products such as these can be the subject of impulse purchases, and appeal to general consumers, not just those who invest in haute couture. Where the goods at issue are purchased by general consumers, even if only occasionally, this factor favors the likelihood of confusion. For example, in a case involving a champagne brand, the Federal Circuit held that this factor favored confusion because average consumers purchase champagne for special occasions.183 This factor favors Kate Spade.
f. There is no Significant Third-Party Registrations or Evidence of Third-Party Use
Generally, the existence of third-party registrations cannot justify the registration of another mark that, as here, is so similar to a previously registered mark as to create a likelihood of confusion, or to cause mistake, or to deceive.184 While third party registrations may be relevant to show that a mark or a portion of a mark is descriptive, suggestive, or so commonly
181 682 F. Supp.2d at 309-16, 318 (emphasis added). 182 Beech Tr. 104 (94 TTABVUE 114); Beech Tr. Ex. 17 (“[T]he brand can be aspirational for some, accessible luxury for others, and also fits well with the customer buying luxury products.”); Beech Tr. Ex. 19 (96 TTABVUE 75) (“[Kate Spade] is sold at a price point that’s accessible to shoppers who desire luxury brands but cannot afford them.”); Opp. 6th NOR, Ex. 117 (51 TTABVUE 3) (citing affordable luxury brands as Michael Kors, Tory Burch and Kate Spade). 183 Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1376, 73 U.S.P.Q.2d 1689 (Fed. Cir. 2005) (holding this factor favored confusion in a case involving champagne marks because “general consumers, not just connoisseurs, occasionally purchase champagne or sparkling wines on celebratory occasions, with little care or prior knowledge”). 184 E.g., In re Max Capital Grp. Ltd., 93 U.S.P.Q.2d 1243, 1248 (T.T.A.B. 2010); In re Toshiba Med. Sys. Corp., 91 U.S.P.Q.2d 1266, 1272 (T.T.A.B. 2009).
33 4848-3075-5457v.8 0096356-000028 used that the public will look to other elements to distinguish the source of the goods or services,185 the facts here do not warrant such a finding.
While Applicants have introduced some instances of third-party marks that contain the word SPADE, SPADES, or symbol for a spade,186 even if valid this evidence reflects, at most, that there are some small-scale uses of marks containing the word SPADE(S) (often with unrelated services, e.g., a single-location nail salon) or that use the spade symbol in a merely ornamental fashion. The TTAB has acknowledged that a trademark owner does not have to stop every mark that resembles its mark. In Chicago Bears Football Club Inc. v. 12th Man/Tennessee
LLC, the Board held that the applicant’s 12TH BEAR mark was likely to be confused with the famous CHICAGO BEARS and BEARS football team marks.187 The evidence of twenty-three college football teams using the BEARS name did not turn the CHICAGO BEARS mark into the kind of weak mark accorded only limited protection. As the Board noted, “‘it is entirely reasonable for the opposer to object to the use of certain marks in use on some goods which it believes would conflict with the use of its marks on its goods and services while not objecting to use of a similar mark on other goods which it does not believe would conflict with its own use.’”188
Consequently, there are no other uncontested registrations or pending applications for prominent marks identical, or confusingly similar, to the KATE SPADE Marks, particularly in the fashion, handbag, home goods, or fragrance other than the KATE SPADE Marks.
185 See, e.g., In re i.am.symbolic, llc, 866 F.3d 1315, 123 U.S.P.Q.2d 1744 (Fed. Cir. 2017); Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 U.S.P.Q.2d 1129 (Fed. Cir. 2015); and Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1338-40, 115 U.S.P.Q.2d 1671, 1674-75 (Fed. Cir. 2015). 186 See App. 1st NOR; see also Section V(A)(2), supra. In a stretch, Applicants also submitted evidence of marks that do not contain SPADE or a Spade at all, e.g., an entity using the mark KATE SPAIN with quilting products. See App. 1st NOR, Exs. 16(A)-16(I). 187 83 U.S.P.Q.2d 1073 (T.T.A.B. 2007). 188 Id. at 1081-82 (quoting McDonald’s Corp v. McKinley, 13 U.S.P.Q.2d 1895, 1899-1900 (T.T.A.B. 1989)).
34 4848-3075-5457v.8 0096356-000028 g. Summary of the DuPont Factors
In conclusion, the evidence clearly shows that the KATE SPADE Marks are famous and
should enjoy a wide latitude of legal protection, the goods of the parties are identical and thus
presumed to be sold to the same consumers and through the same channels of trade, Applicants
adopted THE SPADES Marks with the knowledge and intent to trade upon the KATE SPADE
Marks, and the marks have similar connotations and commercial impressions. In addition to
these facts strongly demonstrating a likelihood of confusion, the risk is enhanced because the
founders of the KATE SPADE brand are involved with Applicants and this is likely to be
publicized. In the (unlikely) event the Board has any doubts about whether confusion is likely, such doubts must be resolved against Applicants because as the newcomers, they have the opportunity and the obligation to avoid confusion with existing marks. A party who knowingly adopts a mark similar to one used or registered by another for the same goods does so at his peril because “there is no excuse for even approaching the well-known trademark of a competitor.”189
Accordingly, the Board should find a likelihood of confusion between Kate Spade’s KATE
SPADE Marks and Applicant’s THE SPADES Marks.
B. Applicants’ THE SPADES Marks are Likely to Dilute the KATE SPADE Marks
1. The KATE SPADE Marks are Famous for Purposes of Dilution
In order to establish fame for dilution, a party must show that its mark “is widely recognized by the general consuming public of the United States.” 15 U.S.C. § 1125(c)(2)(A).
The Lanham Act sets forth four factors that should be considered when determining whether a mark qualifies as “famous”: (1) the “duration, extent, and geographic reach of advertising and publicity of the mark,” (2) the “amount, volume, and geographic extent of sales of goods or
189 Nina Ricci, 889 F.2d at 1074 (internal quotation marks omitted).
35 4848-3075-5457v.8 0096356-000028 services under the mark,” (3) the “extent of actual recognition of the mark,” and (4) whether “the
mark was registered.”190
As discussed in detail above in the context of the likelihood of confusion analysis, there
can be no doubt as to the fame and distinctiveness of the KATE SPADE Marks. By May of 2013
and January of 2014, the marks had been used consistently and continuously for over two
decades in connection with a wide variety of goods and services, with sales of well over $600191 million and Kate Spade has no less than 59 registered KATE SPADE Marks, including 24 that are incontestable.192 Additionally, the KATE SPADE Marks had been the subject of extensive promotion, widespread and significant unsolicited media attention, numerous awards and recognitions. Unsolicited media attention was not confined to the fashion world. Rather, Kate
Spade was regularly mentioned in publications in the area of business, home goods, travel and lifestyle, as well as multiple and varied local publications and publications widely read by the general public, including the Wall Street Journal, the Washington Post, the New York Times and
Better Homes and Garden.193 Accordingly, the KATE SPADE Marks are distinct and famous for
dilution purposes and achieved such fame and distinction well prior to Applicant’s constructive
first-use date.
Taken together, this evidence of fame equals or exceeds the evidence that supported
findings of fame in other dilution cases decided by the Board and Federal Circuit. See, e.g.,
UMG Recordings, Inc. v. Mattel, Inc., 100 U.S.P.Q.2d 1868, 1878 n.11, 1887 (T.T.A.B. 2011)
(finding fame where opposer’s sales over previous five years exceeded $100 million and
advertising expenditures exceeded $5 million, there was extensive third-party media coverage,
190 15 U.S.C. § 1125(c)(2)(A); see also Nike, Inc. v. Maher, 100 U.S.P.Q.2d 1018, 1023 (T.T.A.B. 2011). 191 Pl. Tr. Ex. 24. 192 See Section IV(4)(A), supra. 193 See detailed discussion at Section IV(3)(c), supra.
36 4848-3075-5457v.8 0096356-000028 and opposer had received awards from the Recording Industry Association of America);
National Pork Bd. v. Supreme Lobster & Seafood Co., 96 U.S.P.Q.2d 1479, 1495 (T.T.A.B.
2010) (finding mark to be famous where opposer spent more than $550 million on promotion of
THE OTHER WHITE MEAT mark over more than 20 years, spent on average over $25 million
per year on demand enhancement campaign, and surveys found consumers’ aided awareness to
be above 85%); Research in Motion Ltd. v. Defining Presence Mktg. Grp., Inc., 102 U.S.P.Q.2d
1187, 1192 n.17, 1193, 1197 (T.T.A.B. 2012) (finding BLACKBERRY to be famous where
opposer spent tens of millions of dollars on advertising from 1999 to 2009, received unsolicited
media coverage, and repeatedly had been ranked among the most famous and valuable
trademarks in the world); 7-Eleven, Inc. v. Wechsler, 83 U.S.P.Q.2d 1715, 1722-23 (T.T.A.B.
2007) (finding BIG GULP famous for dilution purposes where sales averaged in excess of $180
million per year, mark appeared in various television programs and movies, and survey showed
73% unaided awareness rate); NASDAQ Stock Market, Inc. v. Antartica S.r.l., 69 U.S.P.Q.2d
1718 (T.T.A.B. 2003) (finding NASDAQ famous for dilution purposes where there was
awareness among 80% of investors, opposer engaged in television, radio and print advertising on
a large scale throughout the 1990s, and its website received 7 million page views per day);
and Chanel, Inc. v. Jerzy Makarczyk, 110 U.S.P.Q.2d 2013 (T.T.A.B. 2014) (finding CHANEL
mark famous based on, inter alia, decades of use, revenues being “high in terms of both dollar value and units sold,” 29 Chanel boutiques and 120 third party merchants selling “broad range of fashion products,” 16.1 million website visits in 2012, over $275 million in advertising and promotion in the U.S. from 2000-2007, unsolicited media, and celebrity sightings using
CHANEL products).
37 4848-3075-5457v.8 0096356-000028 Indeed, Applicants admitted that the KATE SPADE trademark has a “widespread
reputation” and the brand has had “extensive” “success.”194 Furthermore, Applicants’ bad faith
adoption of THE SPADES Marks, discussed supra, demonstrates an intent to create an association with the KATE SPADE trademark.195
In short, the KATE SPADE Marks are the kind of famous marks whose distinctiveness deserves protection from blurring by others.
2. THE SPADES Marks are likely to blur the distinctiveness of the KATE SPADE Mark
Dilution by blurring occurs when an association between marks arises due to their similarity and this impairs the distinctiveness of the plaintiff’s famous mark. The purpose of the prohibition against blurring is to preserve the ability of famous marks to function as unique identifiers for their associated products.196 The federal dilution statute lists the following non-
exclusive factors for determining the likelihood of blurring: (i) the degree of similarity between
the mark and the famous mark; (ii) the degree of inherent and acquired distinctiveness of the
famous mark; (iii) the extent to which the owner of the famous mark is engaging in substantially
exclusive use of the mark; (iv) the degree of recognition of the famous mark; (v) whether the
user of the mark intended to create an association with the famous mark; and (vi) any actual
association between the defendants’ mark and the famous mark.197
194 9 TTABVUE 2. 195 Cf. Nike, Inc. v. Nikepal Int’l, Inc., 84 U.S.P.Q.2d 1820, 1828 (E.D. Cal. 2007) (defendant’s principal admitted that he was aware of the existence of the NIKE mark before he adopted the company name; this factor favored Nike). 196 Deere & Co. v. MTD Prods., Inc., 41 F.3d 39, 43, 32 U.S.P.Q.2d 1936 (2d Cir. 1994); see also Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 265, 84 U.S.P.Q.2d 1969 (4th Cir. 2007) (“In the context of blurring, distinctiveness refers to the ability of the famous mark uniquely to identify a single source and thus maintain its selling power.”). 197 15 U.S.C. § 1125(c)(2)(B).
38 4848-3075-5457v.8 0096356-000028 a. The Parties’ Marks are Very Similar
For blurring to occur, the parties’ marks must be sufficiently similar to cause consumers
to think of the famous mark when confronted with the junior user’s mark.198 As discussed in
detail above, the marks are very similar and as such, this factor weighs in favor of a finding of
likelihood of dilution.
b. The KATE SPADE Mark is Inherently Distinctive
The over 59 registrations for the KATE SPADE trademark issued without a claim of
acquired distinctiveness, demonstrating that the mark is inherently distinctive. The inherent
distinctiveness of the KATE SPADE mark has been enhanced by the significant promotional and
other activities Kate Spade has undertaken to create a famous mark. This is another factor
favoring dilution.
c. Kate Spade Engages in Substantially Exclusive Use of the KATE SPADE Mark
As discussed above, Kate Spade has vigilantly policed third-party uses of marks similar to the KATE SPADE mark199 and substantially exclusive use identified in the statute.
Although Applicants have identified a few small-scale incidents of third parties who use the word SPADE(S) in their marks, this hardly demonstrates that Kate Spade does not engage in substantially exclusive use of the KATE SPADE trademark. As one court held, “‘a limited
198 Nat’l Pork Bd., 96 U.S.P.Q.2d at 1497-98 (holding that slogan THE OTHER RED MEAT was similar to and dilutive of famous slogan THE OTHER WHITE MEAT); see also Perfumebay.com Inc. v. eBay, Inc., 506 F.3d 1165, 1181, 84 U.S.P.Q.2d 1865, 1876 (9th Cir. 2007) (finding the marks EBAY and PERFUMEBAY to be sufficiently similar to support a claim for dilution; “[t]he Perfumebay marks contain either the entire eBay trademark or the dominant suffix ‘Bay’”); Eli Lilly & Co. v. Natural Answers, Inc., 233 F.3d 456, 462-63, 56 U.S.P.Q 2d 1942, 1946 (7th Cir. 2000) (finding PROZAC and HERBOZAC “strikingly similar,” for a mood enhancing drug). 199 See Section IV(A)(5), supra.
39 4848-3075-5457v.8 0096356-000028 amount of third party use is insufficient to defeat a showing of substantially exclusive use.’”200
This factor also favors Kate Spade.
d. The KATE SPADE Mark Enjoys a High Degree of Recognition and Applicants’ Adopted THE SPADES Marks in Bad Faith
As previously discussed in detail, the KATE SPADE Marks enjoyed prior to Applicants’ constructive use date, a high degree of recognition; consequently, the KATE SPADE mark should be protected from the risk of blurring posed by THE SPADES Marks. Similarly, it is clear that Applicants’ adopted THE SPADE Marks in bad faith suggests an intent to create an association with the KATE SPADE Marks.
200 McDonald’s Corp. v. McSweet, LLC, 112 U.S.P.Q.2d 1268, 1279 (T.T.A.B. 2014) (quoting Nikepal Int’l, 84 U.S.P.Q.2d at 1827 (emphasis added)).
40 4848-3075-5457v.8 0096356-000028 CONCLUSION
For the foregoing reasons, Opposer’s opposition to registration of Applicants’ marks should be granted.
Dated: New York, New York November 26, 2018
DAVIS WRIGHT TREMAINE LLP
/G. Roxanne Elings/ By: G. Roxanne Elings L. Danielle Toaltoan 1251 Avenue of the Americas 21st Floor New York, New York 10020 (212) 489-8230 Attorneys for Opposer
41 4848-3075-5457v.8 0096356-000028 SUPPLEMENT TO OPPOSER’S BRIEF: MOTION TO EXCLUDE
Opposer hereby moves to exclude Applicants’ Falby Trial Exhibits 4-17 (collectively, the
“Exhibits” or individually, “Exhibit”), filed by Applicants on November 26, 2018, and the testimony pertaining thereto on the grounds that Applicants’ counsel failed to authenticate or lay the proper foundation for the inclusion of the Exhibits.
The Exhibits at issue, which consist of certain printouts from various websites purportedly showing third party use of SPADE-formative marks, were first entered into the record in connection with the oral cross-examination of Orrin Falby, conducted on August 8,
2018. At Mr. Falby’s deposition, Applicants’ counsel showed the Exhibits to Mr. Falby,
“represent[ed]” that these printouts were captured on August 2, 2018,201 and then proceeded to ask Mr. Falby questions on what these printouts appeared to show.202
This repetitive line of inquiry failed to authenticate the Exhibits, rendering them inadmissible. A party to a proceeding before the Trademark Trial and Appeal Board (the
“Board”) may introduce certain types of evidence by Notice of Reliance, or through the testimonial deposition of a witness. Evidence offered during a testimonial deposition must be admissible under the applicable rules of evidence, that is, the Federal Rules of Evidence. TBMP
§ 703.01(a); 37 C.F.R. § 2.122(a). Under the Federal Rules of Evidence, authentication is a condition precedent to admissibility. Fed. R. Evid. 901. Specifically, according to Federal Rules of Evidence 901(13) and 901(14), Internet materials, such as printouts from websites, are not self-authenticating. Rather, such materials require the certification of a qualified person that the information shown is accurate.
201 See, e.g., Falby Tr. 44:14-17. 202 See, e.g., Falby Tr. 44:12-45:13.
42 4848-3075-5457v.8 0096356-000028 Here, the Exhibits were improper as Applicants’ counsel produced insufficient evidence to authenticate them. Counsel’s representations that the websites were captured on a certain date falls short of establishing her personal knowledge with regard to the manner in which the websites were collected. Moreover, Mr. Falby was unable to authenticate the Exhibits, as he repeatedly stated that he was not familiar with the Exhibits and could only speculate as to what they appeared to show.203 Without the benefit of personal knowledge evidenced by either party,
Applicants’ counsel essentially forced Mr. Falby to speculate on information that is unreliable according to the applicable rules. Opposer’s counsel preserved its objection in the record, and now maintains this objection in requesting that the Board exclude the Exhibits and the testimony pertaining to them from consideration.
Furthermore, even if Exhibits were self-authenticating, they constitute inadmissible hearsay on third party use of SPADE-formative marks in commerce. Printed publications are admissible and probative only for what they show on their face, not for the truth of the matters contained therein, unless a competent witness has testified to the truth of such matters. 7-Eleven,
Inc. v. Lawrence I. Wechsler, 83 U.S.P.Q.2d 1715, 2007 WL 1431084 (T.T.A.B. 2007). Thus, to the extent that Applicants seek to use the Exhibits as evidence to establish third-party use of the marks, this would be improper. In other words, if the Board decides not to exclude the Exhibits, the Exhibits may only be considered as evidence showing that certain third party goods appeared online on August 2, 2018. The Board should give no weight to the Exhibits insofar as they purportedly demonstrate use in commerce. Food Producers, Inc. v. Swift & Company, 194
U.S.P.Q. 299, 301 n.2, 1977 WL 22509 (T.T.A.B. 1977) (Board confining its consideration of certain exhibits “since there [was] no opportunity to ascertain the source and/or basis for the
203 See, e.g., Falby Tr. 21:18-22:15.
43 4848-3075-5457v.8 0096356-000028 information or for respondent to confront and cross-examine the individual or individuals responsible”).
For these reasons, the Board should exclude the Exhibits from consideration.
44 4848-3075-5457v.8 0096356-000028 CERTIFICATE OF SERVICE
I hereby certify that on this 26 day of November, 2018, a true and complete copy of the foregoing Opposer’s Notice of Filing, dated November 26, 2018, has been served upon Applicants’ counsel of record by via email to the following addresses:
Frank J. Gilbert, Esq. Douglas Schwartz, Esq. Schwartz & Cera LLP 88 Kearny St. Suite #1850, San Francisco, CA 94108 [email protected] [email protected]
a n d
Deborah K. Squiers Cowan, Liebowitz & Latman, P.C. 114 W. 47th Street New York, NY 10036 [email protected]
/LDT/
L. Danielle Toaltoan
45 4848-3075-5457v.8 0096356-000028