NY District Court: Well-known Designer Can’t Use His Own Personal Name for His New Line of Clothing

Holding:

In this infringement suit involving the “Joseph Abboud” mark, a district court permanently enjoined fashion designer Joseph Abboud from using his own name to sell, market, or even promote his new menswear clothing line called “jaz.” Specifically, the district court found that Abboud did in fact sell, convey and transfer to plaintiff JA Apparel all of his right and interest to the use of his personal name, in addition to the trademarks, trade names, and designations containing his name, for commercial purposes. On this basis, the district court found Abboud’s proposed use, in connection with his new “jaz” clothing line, would constitute a breach of a prior agreement, irrespective of whether his planned use constituted trademark use. Even in the context of good faith analysis under the “fair use” doctrine, Abboud had attempted to use that which he expressly sold to plaintiff. Consumers seeing JA Apparel’s products marked or advertised as “Joseph Abboud” or “by Joseph Abboud,” would be utterly confused as to whether the “jaz” products advertised as “by designer Joseph Abboud,” were derived from the same source. Abboud was not however restricted from identifying himself when he personally presents his line to buyers within the industry or to potential licensees, or in making personal appearances that do not relate to the sale, marketing, or promotion of goods, products, or services.

Detailed Summary:

Defendant Joseph Abboud (“Abboud”) is a fashion designer.  In 1987, Abboud launched his first menswear line under the “Joseph Abboud” label, while working for the Milton Freeberg Company.  It was at this time that Abboud also registered his personal name, “Joseph Abboud,” as a trademark with the U.S. Patent and Trademark office (“USPTO”).  Thereafter, in March 1988, Abboud, through his wholly-owned corporation, Houndstooth Corp., entered into a joint venture with GFT International B.V. (“GFT”) to manufacture, market, and sell various products under the Joseph Abboud brand name.  The joint venture was named JA Apparel, which is the plaintiff in this case. …

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