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JA Apparel Corp  v  Joseph Abboud

Page history last edited by bebutler@law.fordham.edu 10 years, 7 months ago

JA Apparel Corp. v. Joseph Abboud

 

Contents

Part I

 

     1.  Background

     2.  Abboud by any other name: The JAZ Brand

     3.  Current Dispute

     4.  Madrigal Audio Labs v. Cello Ltd. - 2d Cir. 1986

     5.  Final Argumetns

Part II - After the Holding

     6.  What’s [in] a Name?  Disposition of the JA Apparel V. Joseph Abboud and Discussion

 

1. Background

     At the time of JA Apparel Corp v. Joseph Abboud, Joseph Abboud had been working in the fashion business for about fifty years. In the late 1960’s through the 1970’s. he worked for Louis Boston in a variety of capacities including designer, buyer, merchandiser and coordinator of promotion and advertising. He went on to design tailored clothing for Sotuwick for a year and worked as a menswear designer for Polo Ralph Lauren for four years.[1]

Joseph Abboud launched his namesake Label in 1987 and was one of the hottest designers of the 1980s and 1990s.  He designed clothes for professional men, which combined European elegance with classic American tailoring.[1]  In 1989 and 1990 he was the first designer to ever win back-to-back  prestigious Menswear Designer of the Year awards from the Council of Fashion Designers of America.[2]  In 1987, the name “Joseph Abboud” has been trademarked and Mr. Abboud entered into the “JA Apparel” joint venture with GFT International B.V. (GFT). Pursuant to this venture, Mr. Abboud licensed the “Joseph Abboud” Trademarks to JA Apparel and continued to work for them as the brand flourished from 1988 to 2000. In 1996 new Italian owners of GFT bought out Mr. Abboud’s stake in JA Apparel.[2]

  - Photo of Joseph Abboud

 

In 2000, the license agreement between Mr. Abboud and JA Apparel expired,[3]  and on June 16, 2000, JA Apparel entered into a Purchase and Sale agreement with Mr. Abboud who sold his Joseph Abboud trademark to RCS MediaGroup SpA in 2000, for $65 million.[3]  He remained with the label both as a designer and business partner, only to end up clashing with executives over who would have control over the creative process.[4]  The disputes culminated in lawsuits, and in 2004, a month after the lawsuits were dropped, J.W. Childs Associates LP bought the company for $73 million and named Mr. Abboud the chief creative director.[5]  However, the clashes over the direction of the brand resumed and Mr. Abboud departed the company in 2005.[6]  Because Mr. Abboud had sold his name as a trademark, he could no longer use it to mark any goods he designed or created.  The right to place the Joseph Abboud trademarks on goods belongs exclusively to JA Apparel.  After his departure from JA Apparel Corp., Joseph Abboud was bound by a 2 year non-compete agreement.

[7]

 

- Sketch by Joseph Abboud

 

2. Abboud by any other name: The JAZ Brand

 

 

 

     Shortly after the expiration of the non-compete agreement, on July 13, 2007, Joseph Abboud began work on a new line of menswear under the label of JAZ.  JAZ was set to debut in fall 2008.  He acquired a shirt-factory in Fall River, Massachusets, which specializes in the creation of high-quality dress shirts.  The Alden Street Shirt Factory was on the verge of closing until Mr. Abboud stepped in and saved both the factory and the jobs of its 140 workers.  Mr. Abboud’s intention was for the designer to use his name to promote the new line.  However, Mr. Abboud’s name would not appear on the label. 

 

 

 

JA Apparel, hearing rumblings in the industry about Abboud’s new line and troubled by the possible trademark infringement which could occur when it debuted, took out a full page ad in Daily News Record (“DNR”), the now-defunct daily men’s fashion trade magazine.  The ad read “The Finest Trademark Lawyers in the World Wear Joseph Abboud.”  Lead attorney for JA Apparel, Phillip Geraci (“Geraci”) of New York-based law firm Kaye Scholer, remarked that this advertisement was meant to serve as a warning shot to Mr. Abboud.  It’s placement shortly after the expiration of Mr. Abboud’s non-compete agreement was intentional, and it was meant to indicate, Geraci said, that JA Apparel was prepared to defend vigorously its rights.  (Geraci also remarked that the ad was true—JA Apparel provided the entire Kaye Scholer team with wardrobes for the trial.)

 

 

  Later, in an interview with DNR concerning JAZ, Mr. Abboud initially stated that he understood that he could not use his name "on any product or marketing materials."[4]  Shortly after DNR published the article though, Mr. Abboud demanded that to indicate that "they are free to use [Abboutd's] name in marketing materials, not on clothing."[5]  Mr. Abboud stated that it was not his intention to create confusion among the public and that he just wanted the public to know that he is the designer of Jaz. Considering that the JAZ line would be sold at a higher price point, Mr. Abboud pointed out, it would be in his favor not to have his brand confused with items produced by JA Apparel.  DNR ran the “Clarification” which stated, “according to Abboud and his attorney, Theodore Dinsmoor, the designer ... is, in fact, allowed to use his name on marketing and advertising materials for Jaz.”[6]

 

 

 

 

Mr. Abboud’s “correction” in DNR, Geraci said, was the straw that broke the camel’s back.  Shortly after DNR published it, JA Apparel brought suit.  A month after JA Apparel filed the claim in the U.S. District Court in Manhattan, a Wall Street Journal article made Mr. Abboud’s intentions even more clear.  It stated that Mr. Abboud planned to he planned to promote JAZ with the tagline "a new composition by designer Joseph Abboud."

 

 

     Since the current dispute, Joseph Abboud has returned as the designer in his namesake apparel line. He returned to the runway in 2005. Two of his designs from that collection are below:

 

 

3. Current Dispute

  

On September 4th, 2007, JA Apparel filed a suit against Joseph Abboud charging misappropriation of trademarks, trade names, brand names and designations.[14]  The complaint specifically mentioned that “a new composition by the designer Joseph Abboud” would be a misappropriation of JA Apparel property.[15]  In response, Mr. Abboud denied the charges, and counter sued JA Apparel for $93 million for unauthorized use of Mr. Abboud’s reputation and publicity rights in marketing campaigns which created the impression that Mr. Abboud still works and designs for JA Apparel.[16]  So examples of the slogans at issue were “Do U Know Joe?”

[17]

 

 

4. Madrigal Audio Labs v. Cello Ltd. – 2d Cir. 1986

 

 

Joseph Abboud strongly relies on Madrigal Audio Labs v. Cell Ltd.[18]  The case centered around Mark Levinson who produced audio equipment in the 1970s through Mark Levinson Audio Systems Inc.[19]  Levinson had sold his business, trade name and trademark to the plaintiff, Madrigal Audio Labs, but continued to work with the company.[20]  In 1984, after clashing with the management Levinson left Mark Levinson Audio Systems Inc. and created a separate company, named Cello Ltd., which also produced high end audio-equipment.[21]  Mr. Levinson’s name appeared on promotional brochures for this new equipment.

[22]

            On May 15, 1985, Madrigal which now owned the Mark Levinson trademarks, sued Cello for trademark and trade name infringement.[23]  Madrigal received two injunctions, one of which barred Levinson from generating publicity about this relationship , enjoined Levinson from communicating with dealers or customers on Cello's behalf, and ordered Cello to inform everyone who had received Cello publicity brochures advertising Levinson's designing of products for Cello that Madrigal owned the Levinson trade name and trademark.

[24]

 

            On appeal before the Second Circuit the determinative issue was whether an individual who sold the right to use his personal name as a trademark may be enjoined from using his name in advertisements for a competing company.[25]  The court found that even when a personal name becomes a trademark, the name nevertheless continues to function as a symbol of that individual's personality, and bears the individual’s reputation and accomplishments as distinguished from that of the business.[26]  Whether or not an individual who sells his or her trade name rights is barred from using their personal name depends on the terms of the sale.[27]  A court cannot bar a person from using their personal name unless the intention to convey exclusive rights to the name is clearly shown in the agreement.[28]  The court found that the Levinson agreement showed no intention to convey exclusive rights to his name, and therefore Levinson could use his name in advertising another business so long as it was not used as a trademark.

[29]

 

 

 

5. Final Arguments

 

            At final arguments the defense felt that there were two main questions.[30]  First, whether a name can be used other than as a trademark.  Second,whether the sale of Mr. Abboud’s trademark rights to his name also included the sale of the exclusive right to use his name other than as a trademark.

 

  The defense emphasized that Abboud sold only the trademark rights to his name.  He reserved the right to make personal appearances based on his status as a celebrity.  Despite the enormous sum of $65 million dollars that JA apparel paid for the “Josephy Abboud” line and trademarks, that sum could not be used to imply that all rights to Joseph Abboud's personal name were sold.  In fact, JA Apparel recouped that amount in 3 years.  In the Purchase and Sale Agreement between Joseph Abboud and JA Apparel, Mr. Abboud assigned only the marks.  This was implied because all the trademarks, service marks, and logos were collectively referred to as the Trademarks.  If JA Apparel truly bought the exclusive right to the Joseph Abboud name for all time, including his personal name, they would have stated so clearly in the agreement.  When Abboud advertises his new line with “JAZ a new composition by Joseph Abboud,” he is only communicating to the public that he is the designer.  This situation is similar to Madrigal.  The defense argued that there was a distinction between an individual’s personal reputation, and the goodwill of the brand.  Mr. Abboud had built up his reputation over the years with media appearances, by writing a book, and designing innovative apparel.

 

            The defense stated that a distinction could be made between a trademark and a reference to a person through the prominence, placement and presentation of the name.  Since the Abboud name would not be placed on any products it would not be a trademark: this name would be presented in teh media and advertisements.  The prominence of the name would not be emphasized and would rather appear in the same size, type and color font as the words around it.  Finally, this name would be presented in the media and advertisements.  They were even willing to include a disclaimer stating that the JAZ line was completely separate from the Joseph Abboud line. 

 

            The defense addressed the charge of confusion, by stating that JA Apparel was wrong on the law. Section 33(b)(4) of the Lanham Act allows individuals to use their personal name in business, even if the name is trademarked, and even if there is confusion.  When manufacturers use a personal name as a trademark, they assume the risk that the public will be confused. Further, the First Amendment protects the right to engage in truthful speech.  Mr. Abboud is merely communicating that he is the designer of this JAZ line.  If the statement is truthful, courts must tolerate some level of misunderstanding.  This is the proper balance between the public’s right to know the truth and any danger of confusing the public.  Indeed , JA Apparel seemed to cultivate uncertainty through its advertising campaigns which suggested that someone with the name of Joe or Joseph was designing the apparel.  This intentional confusion led to Mr. Abbud’s counterclaim.  

            Finally, JA Apparel’s claim that Mr. Abboud breached his non-compete agreement by entering into agreements with manufacturers before the expiration of the deal was incorrect.  At all times, Mr. Abboud made clear that a non-compete existed, and that he could not start working with anyone until after it expired.  Not only was the non-compete expired before Mr. Abboud signed any license agreement, but no license agreement was even drafted before the expiration of the non-compete. 

            In final arguments the plaintiff stated that through the language in his advertisements, Mr. Abboud attempts to keep the rights he has sold to JA Apparel.[31]  Through the Purchase and Sale Agreement Mr. Abboud had transferred right to use his name in commerce and as a designation to JA Apparel.  In fact “by Joseph Abboud” was on the list of designations sold to the plaintiff.  The plaintiff argued that Mr. Abboud would be forbidden to advertise with his name even if he were to make a personal appearance at Bloomingdale’s because JA Apparel bought the full rights to use the name in trade.  A reasonable businessman would not enter into an agreement for $65 million where they do not own the name Joseph Abboud in a non-trademark sense.  The defense argued that Mr. Abboud is attempting the use the goodwill of his name, which he sold, to publicized JAZ.  That goodwill belongs to JA Apparel.

 

 

PART II

6. What's in a Name? Disposition of JA Apparel v. Joseph Aboud and Discussion

 

 

 

Overview of the Case

    Despite a general rule established in prior case law that courts should narrowly tailor any relief for trademark infringement by a person whose name is the trademark, this court granted sweeping injunctive relief to JA Apparel against Mr. Joseph Abboud’s use of his name to identify his involvement in a new clothing brand in advertisements and marketing. The court found that such use would be trademark infringement and a breach of a contract in which Mr. Abboud sold the name Joseph Abboud to JA Apparel. This case seems to base much of it’s holding in protecting contract and property rights. “To protect the property interest of the purchaser...the courts will be especially alert to foreclose attempts by the seller to ‘keep for himself the essential thing he sold, and also keep the price he got for it.”[7]

 

Case Issue

The issue for the court is whether Mr. Abboud sold to JA Apparel “the exclusive right to use his name in connection with goods and services.”[8] Specifically the dispute is over whether Mr. Abboud can use his personal name to indicate his personal involvement with his new brand, “jaz” in marketing and advertising, other than through personal appearances.  The court held against Mr. Abboud on both contract and trademark infringement theories. 

 

Contract Theory

    If Mr. Abboud sold to JA Apparel the exclusive right to use his name in connection with goods and services, “JA Apparel is entitled to a permanent injunction preventing Mr. Abboud from using his name in connection with his new “jaz” line, or, in the future, in connection with any other goods and services.”[9]  Mr. Abboud is not seeking to use his name on the “clothes, labels, or hang-tags for the ‘jaz’ line”[10],   which would be clear trademark infringement. The specific dispute is whether Mr. Abboud can use his personal name to market or advertise his involvement with the line in print.

    In the case at hand, a valid binding contract exists which governs the relationship of the parties and the nature of the sale of the “Joseph Abboud” trademark and/or name to JA Apparel. Thus, the court interpreted the contract according to New York Law, which dictates that a contract shall be construed to reflect the parties’ intent. Where a contract is unambiguous, the language of the contract itself is deemed to be the sole indication of the parties’ intent and outside evidence is inadmissible to guide the court’s interpretation of the language. Here, the parties agreed that the contract was unambiguous, yet offered differing interpretations to the court. Thus, the court used the “four corners” language of the contract as evidence of the parties’ intent, and was “required to give meaning to every term in the Agreement … [and to] accord the words of the contract their fair and reasonable meaning.”[11]

    The court’s interpretation of one key clause seemed to be the turning point in the case:

     In exchange for a payment of $65.5 million, which was to be “allocated 100% to Abboud,” Abboud agreed to “sell, convey, transfer, assign and deliver” to JA Apparel “all of [his] right, title and interest in and to” the following:

(A) The names, trademarks, trade names, service marks, logos, insignias and designations identified on Schedule 1.1(a)(A), and all trademark registrations and applications therefor, and the goodwill related thereto (collectively, the “Trademarks”) ... and all other Intellectual Property (as hereinafter defined).[12] 

The issue of interpretation for the court was whether the inclusion of the word “name” in the list of words describing the Schedule 1.1(a)(A) indicated that Joseph Abboud’s personal name was to be included in the items assigned, or whether the word “name” merely described the schedule of trademark names to be assigned. “Defendants' position… [was] that [Mr.] Abboud only sold the rights to use the names, trade names, logos, insignias, and designations listed on Schedule 1.1(a) as trademarks and service marks-and not as independent species of assets.”[13]

The court did not agree with Mr. Abboud’s interpretation. It narrowly construes the language of the contract. If Mr. Abboud intended to convey only trademarks, then the agreement should have omitted the word “name.”  The court stated,  “in order to give the word “names” due meaning and effect, the Court must interpret the Agreement in a manner that provides JA Apparel with that which it expressly purchased-all of Abboud's rights to use his name for commercial purposes.”[14]

 

The court goes on to rebut each of Mr. Abboud’s arguments as follows:

 

a. Intent Must Be Clearly Shown

     Mr. Abboud relied on Madrigal Audio Laboratories, Inc. v. Cello[15]  for the proposition that there is a higher threshold for contract interpretation where the question is whether a party sold the right to commercially use his personal name. “Intention to convey an exclusive right to the use of [his] own name must be clearly shown.”[16]  The court distinguished Madrigal on the facts based on their interpretation of the disputed contract. In Madrigal, the court stated that whether a person has sold rights to their personal name depends on the terms of the sale. Here, Mr. Abboud had contracted to sell his name to JA Apparel.

The courts’ logic seems to have set up a Catch-22. In the absence of considering Madrigal, the court interprets the document to have a certain meaning. When it analyzes Madrigal, it cites its interpretation to conclude that Madrigal is not applicable to the facts of the case.

Despite the fact that the Court did not use Madrigal’s holding to influence their interpretation of Mr. Abboud’s sales contract to JA Apparel, there are other factors that weighed in the courts decision to distinguish the Madrigal case. First, in Madrigal, the Plaintiff did not assert that they had executed a contract for sale of a personal name that had been breached. Moreover, the transfer of the name happened through a bankruptcy proceeding and Levinson received only a token amount. Mr. Abboud negotiated the sales contract and received substantial consideration for the sale.  Finally, the court determined that the items sold in Madrigal were “distinct” from the plaintiff’s goods. Contract terms, consideration and uniqueness of the goods were the key elements that weigh in the court’s determination.

     The court interpreted two other relevant cases, Levitt and Nipon, in a similar manner as they interpreted Madrigal.  The court stated that the court’s first role is to interpret the language of the contract to determine what was sold to the purchaser. If the court determines that the “seller is subsequently trying to use to his advantage, and to the detriment of the purchaser, that which he previously sold, courts should be prepared to grant ‘sweeping injunctive relief’ if necessary to protect the rights of the purchaser.”[17]

 

b. Right To Make Media Appearances

    In an agreement that Mr. Abboud executed a month after the 2000 Purchase and Side Agreement, Mr. Abboud “reserved his personal publicity rights to himself, and was specifically permitted to make media and celebrity appearances in his individual capacity, and to develop a personal reputation, which would imply a right to identify himself.”[18]   The court dismisses this argument. They state that Mr. Abboud did not loose the right to be “Joseph Abboud” and to make media appearances as himself or as a fashion expert. They indicate that that right is distinct from his right to use his name to promote goods or services. 

The Side Agreement’s most important terms were a 5-year non-compete, and the consideration for Mr. Abboud’s agreement not to compete was stated as the $65 million he received in the main document interpreted by the court, the Purchase and Sale Agreement. Although the unambiguous nature of that main agreement means that evidence external to the agreement can not be admitted to aid the courts determination of the intent of the parties, the Side Agreement seems to be closely related to that agreement because of the identical consideration, and should be considered as indicative of the intent of the parties.

 

c. Placement Of The Words Identified On Schedule 1.1(a)(A)

To the extent that the court did not previously address any arguments regarding Schedule 1.1(a)(A), its final rebuttal of the Defendant’s argument is the most definitive and persuasive.  Article 1.1(a)(C) provides for the sale of, “all rights to use and apply for the registration of new trade names, trademarks, service marks, logos, insignias and designations containing the words ‘Joseph Abboud,’ ‘designed by Joseph Abboud,’ ‘by Joseph Abboud,’ or anything similar to or derivative thereof ... for any and all goods and services."[19]

From that language, the Court concluded that “Mr. Abboud's proposed use, in connection with his new ‘jaz’ clothing line, of the phrases ‘a new composition by designer Joseph Abboud’ and ‘by the award-winning designer Joseph Abboud,” would constitute a breach of Sections 1.1(a)(A) and 1.1(a)(C) of the Agreement.”[20]

The language in section 1.1(a)(C) seems to be the most compelling reason the court presents for it’s holding. The meaning intended by the inclusion of the word “name” before the introduction of Section 1.1 (a)(A) could be interpreted as either  the plaintiff or the defendant propose. However, any question remaining about Mr. Abboud’s proposed use is answered by section 1.1(a)(C), which clearly states that anything derivative of the phrasing “designed by Joseph Abboud” belongs to JA Apparel. By basing their holding on the language in Section1.1(a)(A), the court answers a broader question than the specific facts of the action call for, and thus grants broader relief to the plaintiff. This is likely done for efficiency sake; a similar suit is unlikely to arise from these parties or others.

 

d. Other arguments

Absence Of The Word “Exclusive”

The court also rejected Mr. Abboud’s argument that the contract should have included specific language to transfer ‘exclusive’ rights to JA Abboud for the use of his name. The contract did provide for the transfer of “all” rights and there is no difference in the meaning beyond semantics.

 

No Assignment For Name And Trade Name

The court did not agree with the argument that, through the Purchase and Sale Agreement executed in 2000, Mr. Abboud transferred only trademarks because he “only executed assignments for the Marks, and the registrations and applications associated with them.”  The court interpreted Mr. Abboud’s argument to mean that Mr. Abboud believed a separate agreement was required for the name to be transferred. The court said this was illogical.

It seems that Mr. Abboud was not arguing that a separate contract was necessary to transfer the names, only that the Purchase and Sale Agreement that was executed did not indicate an intent to transfer anything other than Marks and Registrations – since names are not registered they were not included in the purview of the 2000 agreement.

Schedule 1.1(a)(A) Is A Trademark Report

    The court rejected Mr. Abboud’s interpretation of the contract that that the parties intended only to transfer trademarks and trade names. Mr. Abboud argued that Schedule 1.1(a)(A) was a list of all of the items to be sold to JA Apparel. He argued that it included only trademarks to be transferred. The language introducing the schedule, which included the word “name”, referred to the trademark report and did not itself convey the personal name “Joseph Abboud.” The court did not accept this interpretation, and gave meaning to the description of the Schedule which read that it transferred all “names, trademarks, trade names, service mark, logos, and designations” to JA Apparel.

 

 

Trademark Theory - Plaintiff's Trademark Infringement Claims

 

    The Court ruled that under the contract, the proposed use of the Joseph Abboud name is prohibited, which forecloses Mr. Abboud from any commercial use of his name.  The court goes on to consider the trademark infringement claims and holds that the proposed use would also be trademark infringement under the Lanham Act.  Like the broader contract holding, the court’s decision to consider the trademark infringement claims makes it unlikely that future suits will be brought on similar facts and thus is an efficient choice.

    The Lanham Act protects holders of valid trademarks from uses of those marks that are likely to “cause consumer confusion as to the origin or sponsorship of the defendants' goods.”[21]  The Court determines that there is a significant likelihood of a consumer being confused by the proposed advertisements based on the strength of the Abboud marks, the similarity of the types of goods at issue and a few instances of actual confusion. 

The court thus turns its attention to the Fair Use Defense.  The Lanham Act provides that a valid defense to a finding of trademark infringement is that the use of the name, other than as a mark, is use of “the party’s individual name in his own business … only to describe the goods or services of the party or their geographic origin.”[22]  Courts look at whether a) the term is used descriptively, b) the name is not used as a mark and c) any use is "in good faith.”

The court finds that Mr. Abboud is not using the name “Joseph Abboud” merely descriptively. Rather he uses it as a trademark because he intends to identify himself as the source of the work, which is an element of a trademark. A descriptive use is usually to describe the make-up or quality of an item, not it’s source.  The court held that “[Mr.] Abboud is attempting to use his name, and the goodwill associated with it, to identify and distinguish goods, and to advise consumers that he is the source of his new “jaz” line.”[23]

 

 


[1] Tina Sutton, Project Comeback, Boston Globe, Sept., 30, 2007, at 42 [hereinafter Sutton].

[2] Id.; Council of Fashion Designers of America, Past Winners (available at http://www.cfda.com/index.php?option=com_cfda_content&task=fashion_awards_display&category_id=31).

[3] Thomas Brenner, The Battle Over Abboud: What’s at Issue, News Rec., Oct. 10, 2007 [hereinafter Brenner]; Ray A. Smith, What’s in Name? Not Much, He Hopes, The Wall Street Journal, Aug. 6, 2007 [hereinafter Smith]; Sutton, supra note 1.

[4] Smith, supra note 3.

[5] Id.

[6] Id.

[7] Id.

[8] David Lipke, All That Jaz: Abboud Unveils His New Label, DNR, Aug. 6, 2007 [hereinafter Lipke].

[9] Id.; Brenner, supra note 3.

[10] Lipke, supra note 8.

[11] Sutton, supra note 1.

[12] Brenner, supra note 3.

[13] Id.

[14] Id.; JA Apparel sues designer Abboud, The Wall Street Journal, Sept. 5, 2007.

 

[15]

Plaintiff's Memorandum of Law in Support of Its Application for an Order to Show Cause Why a Preliminary Injunction Should Not Be Entered, JA Apparel Corp. v. Joseph Abboud, No. 07CV07787 (S.D.N.Y. Sept. 10, 2007).

 

 

 

[16]

Answer and Counterclaims of Defendants and Counterclaim Plaintiffs Joseph Abboud, JA Apparel Corp. v. Joseph Abboud, No. 07CV07787 (S.D.N.Y. Sept. 28, 2007) [hereinafter Defendant's Answer].

 

[17] Brenner, supra note 3.

[18] Defendant's Answer, supra note 16; Defendant's Closing Statement, infra note 30; Madrigal Audio Labs v. Cello LTD, 799 F.2d 814 (2nd Cir. 1986).

[19] Id. at 816.

[20] Id.

[21] Id. at 817.

[22] Id.

[23] Id.

[24] Id. at 820.

[25] Id. at 821.

[26] Id. at 822.

[27] Id. at 823.

[28] Id. at 822.

[29] Id. at 823.

[30] Closing statement of Attorney Louis Ederer of Arnold & Porter LLP for Defendant Joseph Abboud, JA Apparel v. Joseph Abboud, S.D.N.Y., No. 07CV07787, Apr. 3, 2008 [hereinafter Defendant's Closing Statement].

[31] Closing statement of Attorney Unknown of Arnold & Porter LLP for Plaintiff JA Apparel, JA Apparel v. Joseph Abboud, S.D.N.Y., No. 07CV07787, Apr. 3, 2008.

 

Footnotes

  1. JA Apparel Corp., v. Joseph Abboud, 591F.Supp.2d 306, 311 (SD NY 2007).
  2. Id.
  3. Id.
  4. Id.
  5. Id.
  6. Id.
  7. Practicing Law Institute, Recent Developments in Trademarks: Selected Cases, PLI summary: 947 PLI/Pat 1113, September-October, 2008.
  8. JA Apparel Corp. v. Joseph Abboud, 591 F.Supp.2d 306, 307 (SD NY 2008).
  9. Id. at 316.
  10. Id.at 316, fn 4.
  11. Id. at 317 – 319 (internal quotations omitted).
  12. Id. at 318.
  13. Id. at 319.
  14. Id.
  15. Madrigal Audio Laboratories, Inc. v. Cello, Ltd., 799 F.2d 814 (2d Cir.1986).
  16. JA Apparel Corp. v. Joseph Abboud, 591 F.Supp.2d 306, 320 (SD NY 2008)(internal citations omitted).
  17. Id. at 323 (citing Levitt Corp. v. Levitt, 593 F.2d 463 at 468 (2d Cir.1979)).
  18. Id. at 325.
  19. Id. at 326.
  20. Id. at 327.
  21. Id. at 328. “Eight Polaroid factors govern this analysis: “(1) strength of plaintiff's mark; (2) degree of similarity between the two marks; (3) proximity of the parties' products or services; (4) likelihood that the prior owner will bridge the gap between the parties' products or services; (5) actual confusion; (6) defendants' bad faith in adopting its mark; (7) quality of defendants' products or services; and (8) sophistication of the relevant consumers.” Id.
  22. Id. at 329 (citing the Lanham Act, 15 U.S.C. § 1115(b)(4), section 33 (b)(4)).
  23. Id. at 331.

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