Kate Spade wins trademark infringement case against Surf for Saturday brand

Judge rules that new brand does not infringe on the name of a popular men's clothing company

Kate Spade has started out 2014 with some good news. After recently filing a lawsuit declaring that its new, SATURDAY brand, did not infringe on the name of any of the popular men’s clothing company, SATURDAY SURF LLC, the district court officially ruled in the women’s retail apparel company’s favor.

Shortly after filing the suit, Surf LLC filed a counterclaim alleging trademark infringement and reverse confusion against Kate Spade’s use of the word Saturday in its new brand. Surf’s biggest concern was that the use of the term Saturday would confuse consumers by leading them to believe that Surf’s products were licensed by or affiliated with Kate Spade, or that Surf was the one infringing on Kate Spade’s SATURDAY mark.

According to the civil case available on Finnegan.com, the district court analyzed both Surf’s trademark infringement and Kate Spade’s declaratory judgment action, addressing the protect-ability of Surf’s alleged SATURDAY marks (SATURDAYS SURF NYC, SATURDAYS, and SATURDAYS SURF). The court held that SATURDAYS SURF NYC was indeed a valid mark based on its federal registration, but noted that the scope of protection it and Surf’s other asserted marks are entitled to would depend on the strength of the mark SATURDAYS standing alone. 

The court ruled that Saturday being a day of the week does not necessarily make it ineligible for trademark protection.  The term Saturday refers to a lifestyle exuding the carefree attitude a consumer feels on the weekend, which can be applicable to any brand or product. The usage of the word Saturday in the apparel and accessories industry is common; therefore, Surf should not be permitted to monopolize Saturday as a trademark. 

The court also held that Surf did not present sufficient evidence showing use of SATURDAYS as a trademark. According to the ruling, the court found that Kate Space had adopted the SATURDAY mark in good faith, citing Kate Spade’s lack of knowledge about Surf and its consultation with counsel before and after learning of Surf and its SATURDAY-formative marks. 

Overall, due to the word Saturday being such a common term, Kate Spade LLC won the claim due to the court determining that the word could be entitled to a very narrow scope of usage with little room for consumer confusion. The court ruled in Kate Spade’s favor on the infringement counterclaims and found its request for declaratory judgment to be unnecessary since it is unlikely that a consumer would confuse a company specializing in men’s products with a women’s apparel brand as well known as Kate Space.

 

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Contributing Author

Stefanie Mosca

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