The Tommy Hilfiger Corporation, a brand owned by the American clothing company PVH (NYSE:PVH), designs and manufactures a range of clothing items and fashion accessories for men, women and children. On Friday, September 9th, Tommy Hilfiger debuted a new fashion line developed in collaboration with model Gigi Hadid during the most recent New York Fashion Week. The line, marketed as TOMMYxGIGI, features footwear, pants and tops which evoke a naval theme.
Almost immediately following the debut of TOMMYxGIGI, leather handbag manufacturer GiGi New York announced that it had sent a cease and desist letter to Tommy Hilfiger. In a press release, GiGi New York argued that similarities between the two brands created the potential for customer confusion and Tommy Hilfiger’s new brand infringes upon the “GIGI” family of trademarks held by GiGi New York.
GiGi New York was launched in 2012 as a fashion accessory and lifestyle brand by luxury goods manufacturer Graphic Image, the company which holds the GiGi trademarks. A search of the Trademark Electronic Search System (TESS), made available online by the U.S. Patent and Trademark Office, shows Graphic Image with a total portfolio of five trademarks which are currently live, three of which have been registered. One of the registered live marks, U.S. Trademark Registration No. 4120920, protects “GiGi New York” as an illustration drawing with words in stylized form. The trademark was registered in April 2012 and is currently on the Principal Register. The mark’s description specifies the illustration drawing with wording mark as having the words “New York” positioned so that the “N” in “New York” is positioned under the last “i” in “GiGi” and the word “GiGi” extends out to the right. The goods and services for which this trademark has been registered includes leather bags, wallets, key cases and suitcases. Graphic Image also holds a live trademark application in U.S. Trademark Application No. 87159781 which would protect a standard character mark for “GIGI” in the same class of goods included in the ‘920 registered trademark.
Part of GiGi New York’s trademark infringement allegation is directed at how Tommy Hilfiger has styled the name TOMMYxGIGI, especially in the use of a “unique upper and lower case treatment.” By styling the brand name as TOMMYxGIGI, Tommy Hilfiger has copied an alternating case which has never been used by Gigi Hadid, which GiGi New York argues increases the risks for customer confusion. At least one advertisement for TOMMYxGIGI, included in this post published by fashion law news source The Fashion Law, uses an alternating case which mirrors the “GiGi” form used by GiGi New York.
GiGi New York is also concerned about how its corporate reputation might be affected if customers begin to associate its brand with Tommy Hilfiger. The press release mentions reports of poor working conditions at overseas factories where manufacturing work is performed for Tommy Hilfiger. GiGi New York is interested in distancing itself from that type of negative association, adding that its company has a staff of 200 employees and has produced its products in New York City for 40 years.
A search of trademark records through TESS shows 268 trademarks for which Tommy Hilfiger has applied for over the years, dozens of which are still live as either trademark applications or registered trademarks. Tommy Hilfiger may have filed a trademark application recently for TOMMYxGIGI although none have been published by the USPTO as of this writing. The Tommy Hilfiger trademark application which has been published most recently is U.S. Trademark Application No. 87035107, which the fashion company filed on May 12th of this year. It would protect an illustration drawing without words, letters or numbers consisting of a heraldic lion holding a sword with one hand above its head and arrows with the other, inside an oval surrounded by a crown on top, branches of leaves on either side and a banner below the oval. Those with a knowledge of Tommy Hilfiger branded clothing will likely recognize this as a version of the heraldic lion that appears on various fashion items.
The trademark which has been most recently registered for Tommy Hilfiger is U.S. Trademark Registration No. 4957508, which was placed on the Principal Register on May 10th of this year. It protects an illustration with wording which consists of a flag with blue bars at the top and bottom and a red block in the middle to the right of the blue bars, the flag appearing between the words “TOMMY” and “HILFIGER.” This illustration with wording mark is registered by Tommy Hilfiger to be used on goods including various textile products, such as coasters, table linen, fabric table runners, napkins, placemats and curtains.
The press release reporting the cease and desist letter sent by GiGi New York indicates that Tommy Hilfiger responded to the letter. It its response, Tommy Hilfiger did not intend to recognize their rights in GiGi’s trademarked logo and did not feel that the concerns over customer confusion was reasonable. GiGi’s press release indicated that it would seek to enforce its trademark rights held both in the United States as well as Europe against Tommy Hilfiger’s new fashion line. An article published by The Los Angeles Times on September 20th indicated that lawyers for Tommy Hilfiger and GiGi New York were in communication to adjust its styling of GiGi in its products. A post on Promogram, a newsletter published by the Advertising Specialty Institute, included comments from Graphic Image owner Tom Glazer indicating that his company had offered to license its GiGi trademark through the end of 2016.
Tommy Hilfiger is no novice when it comes to navigating trademark infringement litigation as its activities in past cases reflects. Back in 2003, the fashion company won an $11 million judgement in a trademark counterfeiting and infringement case against American family apparel company Goody’s Family Clothing. The case involved unauthorized imitations of the Tommy Hilfiger flag trademark on private label merchandise sold by Goody’s. Tommy Hilfiger has put up vigorous defenses against claims of trademark infringement in the past. In September 2013, the company challenged the validity of a trademark held by shoemaker Charles Philip in a New York federal court after Charles Philip alleged that the interior of Tommy Hilfiger shoes infringed upon its patterned vertical stripe trademark.