POSTED IN BUSINESS
The fashion industry, more so
than almost any other industry, is driven by individuals — individuals who
capture the essence of a desired persona with their unique clothing and
accessory designs. Individuals whose very names evoke images of glamour and
style. Individuals whose names have become famous international corporate
brands.
Burberry, Chanel, Gucci,
Prada, Versace. Most people hear these words and think of things, not
individuals. This association that your brain makes, going from the words to
the collection of apparel and accessories synonymous with those words, is
exactly what trademark law is meant to protect. As such, it is illegal for
anyone other than the owners of the trademark to use these words, or similar
words, in most commercial endeavors.
But let’s not forget, these
words are the names of individuals. So at the end of the day, who controls the
word that constitutes a designer’s name, a worldwide corporate brand, and
perhaps even a third-party’s brand? It probably depends on who got there first
and who had the better lawyer. Because the use of personal names as trademarks
in the fashion industry can be a messy situation depending on issues of
trademark and contract law.
Brand vs. personal name: When
both share a name
Consider the recent case
between the Italian luxury shoe and accessory brand Salvatore Ferragamo and
Ferragamo Winery, which was founded in California by former NFL quarterback
Vince Ferragamo. Salvatore Ferragamo recently instituted suit against Vince Ferragamo,
for claims of trademark infringement and dilution, for using the Ferragamo name
in connection with the winery.
Salvatore Ferragamo is essentially saying that
the Italian shoe and accessory brand has become damaged and its value
diminished because consumers will confuse the two Ferragamos and wrongfully
associate the Ferragamo wine with the global shoe and accessory brand.
Now, it’s probably safe to say
that Vince Ferragamo did not use his surname with the specific intent to usurp
the intrinsic value of the Ferragamo name; he merely wanted to identify himself
as the source of the wine. However, this does not mean that Salvatore Ferragamo
is wrong. It is probably correct to say that people who know Ferragamo brand
may very well be convinced that the wine is coming from the luxury fashion
house. The consumer may even believe that Vince Ferragamo has some association
with the Ferragamo brand. It will be interesting to see how the court rules in
this case, especially given the fact that Salvatore Ferragamo had long ago
registered the trademark Ferragamo name in the U.S. in connection with wine but
hasn’t been actively using the trademark.
The Ferragamo case represents
the conflict of very legitimate interests in a personal name trademark.
However, personal name trademark cases don’t always seem to involve innocuous
intentions. Take for example, the recent case between international fashion
house Burberry and rapper/producer Perry Moise, who goes by the stage name of
Burberry Perry. Burberry alleges that Perry Moise infringes its trademarks by
using the stage name Burberry Perry and using its famous tartan pattern and
signature “Equestrian Knight” logo. Given the use of the tartan plaid and logo,
it seems pretty obvious that Perry Moise intended to adopt some of the persona
that Burberry embodies.
But putting the use of the
trademarks aside for a moment, what would happen if Perry Moise’s actual birth
given name was Burberry Perry? One would have to imagine that he would be
allowed to perform and work in the music industry under his own name. Even
then, though, it is a well-settled fact in the realm of trademark law that an
individual does not have an unrestricted right to use their name for commercial
purposes.
Just ask Chanel Jones.
Chanel Jones is a woman from
Indiana who ran her own salon called Chanel’s Salon. After running her business
for a couple of years, and after allegedly receiving numerous cease and desist
letters, Chanel Jones was sued by the Paris-based design house, Chanel, Inc.
Even though Chanel Jones claimed not to have any intentions of violating
trademark law, ultimately a consent judgment was entered wherein it was
admitted that her use of the name “Chanel’s Salon” did in fact constitute
trademark infringement. The judgment clarified that while Chanel Jones
was not restricted from using her personal name solely in a personal,
non-commercial capacity, as a means of identifying herself, she was barred from
using the word “Chanel” in a commercial capacity and in any manner that
suggests an affiliation or relationship with Chanel. This bar included using
the name for trademarks, advertising, and even as metadata for search engines.
Eponymous brand vs. designer:
What happens after the sale?
Another common legal issue regarding
personal name trademarks is when a designer is doing business under his or her
own name and then sells the business, including the personal name trademark and
brand. Then, when the designer later wants to continue designing under that
name, he or she finds that they no longer “own” it. The Gucci family, Joseph
Abboud, and most recently the Fiorucci family have all been told that they can
no longer use their personal names, or must do so with severe restrictions, in
connection with developing new brands. But these restrictions that these
“nameless” designers must adhere to are a product of the very deals that the
designers themselves agreed to in exchange for millions of dollars.
Fashion history is littered
with the stories of designers, and individuals, such as Chanel Jones, who
probably could have avoided massive legal issues regarding their eponymous
labels, if only they had carefully taken the time to plan out their own
desires. For example, in the case of Chanel Jones, if she had utilized a more
distinguishing name such as “Chanel Jones’ Salon,” or actively disclaimed any
association with the fashion mega-brand, then she may have avoided infringing
the trademark altogether. Instead, Jones can’t commercially exploit the word
“Chanel” anymore in connection with her businesses.
The lesson to be learned?
Designers with eponymous labels should think twice when adopting, licensing or
selling their brand, especially any eponymously-related trademarks. This is not
to say that they should avoid the transaction altogether, but rather they
should slow down and take the painstaking time, energy and money to detail how
exactly they want their brand and name to be used, and what will happen after a
sale.
If a designer is ready to hang
up the drawing board and retire completely, then fine, sell everything for as
much as you can get for it. But if there exists even the slightest inkling to
continue as a designer, then a carefully laid plan should be laid out between
the parties of the transaction. It may sound like a nightmare trying to work
that agenda into what is probably already a fairly large and complex deal, but
it is nothing compared to the nightmare of not being able to use your own name
as a designer.
At the end of the day,
designers who really wants to use their own name as a brand should do so. There
are certainly unique advantages to doing so on top of the personal fulfillment
of seeing your name on a clothing and accessory line. But these designers
should remember that there are pitfalls that need to be addressed early and
revisited often when using a personal name for a fashion band. Having a plan in
place for the eponymous brand at each step of the way is essential.
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