There has been an ongoing battle for the rights in the term ‘New York Fashion Week’ between Fashion Week, Inc (‘FWI’), a company that sells tickets to New York Fashion Week events, and the Council of Fashion Designers of America (‘CFDA’)– the industry’s major not for profit trade association with a membership of over 450 American fashion designers.
In November 2013, FWI applied for the trade mark of ‘New York Fashion Week’ with the US Patent and Trade Mark Office in connection with ‘on-line entertainment ticket agency services’. Only months later in March 2014, CFDA applied to register the same mark in connection with ‘the organisation of fashion shows for commercial purposes…’
But CFDA was beaten to the punch and in July 2014, FWI was awarded registration, and subsequently also registered ‘NYFW’, again frustrating CFDA’s efforts to later register similar trade mark applications.
CFDA’s application for ‘New York Fashion Week’ was subsequently refused owing to several already-registered trade marks, including those held by FWI.
CFDA filed proceedings in 2015 seeking to cancel FWI’s registrations on the basis that ‘consumers are likely to mistakenly believe that registrant’s services bearing the ‘New York Fashion Week’ mark originates with (CFDA)…’ and pointing out that it had established rights in the mark through continuous use dating back to at least 1994, and well before FWI’s first use in 2013.
But CFDA appears not to have followed through sufficiently on its petition to cancel the FWI mark. In February this year, FWI successfully pursued a motion for judgement, asking the Trademark Trial and Appeal Board to dismiss the case with prejudice on the basis the CFDA did not ‘take measures to effectively prosecute its case’.
The question now is, to what extent will FWI use its registrations to seek to block CFDA’s use of the marks?
The case is a good example of the importance of ensuring trade marks of value are registered sooner than later.