Tim’s post last week on the dispute between Victoria’s Secret PINK (a women’s lingerie and loungewear line) & Thomas Pink (predominantly known for its menswear line) reminded me of a Women’s Wear Daily article that I read regarding a trademark dispute involving Kate Spade New York’s new KATE SPADE SATURDAY brand, a more casual womenswear line.

Saturdays Surf NYC was not so thrilled with that launch.  Saturdays Surf NYC is a menswear company that sells casual-wear and surfboards (surfboards…how do you get a surfboard home on the subway in New York?).  The company has a federal trademark registration for SATURDAYS SURF NYC for, among other goods and services, “clothing, namely, t-shirts, collared shirts, sweaters, sweatshirts, hooded sweatshirts, jackets, shorts, pants, slacks, trousers, swimwear, gloves, scarves, socks, and shoes” and “retail and on-line retail store services featuring clothing, clothing accessories, personal grooming products, coffee, and artwork.”  Notably, none of these goods or services are limited to clothing for men.

The  all caps stylization in a sans serif font of the Saturdays Surf NYC logo is also remarkably similar to the Kate Spade Saturday logo.  In addition both SATURDAY or SATURDAYS appear in a larger font size relative to the other words in both logos.

Kate Spade filed a complaint in the Southern District of New York seeking a declaratory judgment that its mark KATE SPADE SATURDAY did not infringe on SATURDAYS SURF NYC.  Despite evidence of some actual confusion (SATURDAYS SURF NYC clothes being returned to Kate Spade and vice versa) and evidence that Saturdays Surf NYC carries items in smaller sizes that women purchase (but unlike Kate Spade not designed for women), the court found for Kate Spade.   In concluding that Kate Spade’s mark indeed did not infringe Saturdays Surf NYC, the judge wrote:

I am particularly persuaded by the relative weakness of the word that the two marks share, the significant distance between the men’s and women’s products, and the consistent inclusion of the famous house mark, Kate Spade, in its Kate Spade Saturday mark.

Perhaps if it were JACK SPADE SATURDAY (a menswear line related to Kate Spade New York), the decision might be different.  Relying on a case from 1979, the Kate Spade court stated that there is “significant competitive distance” between the two lines based on the fact that one’s products are designed for men and the other’s products are designed for women.  Nearly 35 years later, do you think that’s true for fashion now or, as society has changed, do you think that competitive distance between men’s design and women’s design has been minimized?

Based on this Kate Spade decision, the outcome in the PINK dispute may be more favorable for Victoria’s Secret, given the seemingly greater weakness of PINK for apparel and the differences between the products, and assuming consistent inclusion of their famous house mark Victoria’s Secret.