Thursday, August 09, 2007

"What's in a Name Anyways ?!"

The Wall Street Journal (WSJ) recently reported on Aug. 5, 2007, that Joseph Abboud, the famous men's clothing designer, is starting a new label called JAZ. It was only a few years ago that he sold his JOSEPH ABBOUD trademark and label for approx. $65 million dollars.

The question, therefore, is whether Mr. Abboud can still use his own name to sell his new line of men's clothing. The answer is "That Depends", of course. Can Mr. Abboud now use JOSEPH ABBOUD as a trademark ? Definitely not ! Is there any other type of use that he can undertake ? As a matter of fact, according to the WSJ and Mr. Abboud's trademark counsel, he intends to do just that. In this regard, Mr. Abboud intends to use the tagline, "A new composition by designer Joseph Abboud."

You may now be asking how can Mr. Abboud use his name like this if he sold the rights to his trademark, JOSEPH ABBOUD. This is where U.S. Trademark Law comes into play.
It just so happens that the Federal Trademark Act provides for the so-called "descriptive use" of someone else's trademark, which is sometimes referred to as "Trademark Fair Use." In the Federal Trademark Act at 15 U.S.C. §1115(b)(4), it states the following to be a defense to trademark infringement: "That the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of the party's individual name in his business, or of the individual name of anyone in privity with such party, or of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin."

In this case, of course, Mr. Abboud and his trademark counsel have selected a fine example of trademark fair use which is reasonably understood as merely a descriptive use of Mr. Abboud's name in connection with his new venture. In connection with this descriptive tagline, however, they must still be careful to avoid common earmarks of trademark use such as the use of quotation marks, stylized fonts, large type size, different color type, etc. Additionally, Mr. Abboud and his attorney have indicated that Mr. Abboud intends to use the trademark, JAZ, as his new label for men's apparel, so there is clear intent as to the trademark that Mr. Abboud is going to use.

What will happen, however, in terms of Mr. Abboud's marketing and promotional efforts is a potential point of contention. To what extent can Mr. Abboud use his likeness and his name in association with what is certainly going to be a large scale multimedia advertising and promotional campaign. Time will tell, of course, whether or not Mr. Abboud will cross the line and cause likelihood of confusion between his new label and the label he sold. The conundrum for Mr. Abboud, therefore, as stated in the WSJ, "Mr. Abboud faces an unusual challenge in the design world: how to remind consumers and retailers of his past success while distancing his new line from the brand that currently bears his name."

Thus it all comes down to the fact that this is all abboud time, its all abboud place, and its obviously abboud time I leave this space.