Vogue takes Black Vogue to court…

Advance Publications, Vogue and Condé Nast’s parent company has filed a suit against 26-year old designer and activist Nareasha Willis in a New York federal court.

Image credit- Instagweb

Brief history …

·        At the beginning of this year, Nareasha filed a trademark application with the U.S. Patent and Trademark Office (“USPTO”) to register Black Vogue for use on an array of garments and accessories, including hoodies, baseball caps, track pants, trench coats, and swimming trunks.

·        On May 23, 2018, the USPTO refused registration of Willis’ Black Vogue trademark, holding that it is confusingly similar to several of Advance’s registered Vogue trademarks.   

·        Advance’s legal team sent Willis a letter requesting that she cease her use of the infringing Black Vogue mark and abandon her pending trademark application.

 

Grounds- Trademark infringement and dilution, and unfair competition on the following basis;

·        BLACK VOGUE is too similar to VOGUE and as a result, is likely to cause confusion amongst consumers, and damage to the well-known and “highly acclaimed” Vogue trademarks.

·        Whilst Advance has been using the federally-protected Vogue trademark for the past 125 years on magazines (as well as on an increasingly wide variety of goods and services, including advertising and e-commerce services, software applications for content in the field of fashion, hand bags, tote bags, purses, luggage, wallets, body creams, scented candles, jigsaw puzzles, nightclub and restaurant services, clothing and jewelry”), Nareasha has very recently begun using the trademark Black Vogue in commerce, for the purposes of selling apparel items.

·        The Black Vogue mark mirrors the well-known font and stylization of Advance’s long registered Vogue trademark and in selecting the trademark Black Vogue for her products, Willis intends to create a link between herself and Vogue, creating the appearance that Advance is affiliated with Willis’ products, or that Advance has licensed or otherwise authorized her use of the Vogue trademark, when that that is not the case.

Remedies sought;

·        To order Willis to immediately and permanently cease all use of the Black Vogue trademarks and any similar trademarks, domain names, and advertising keywords or metatags to promote any product.

·        Monetary damages, including “all gains, profits and advantages derived by Willis from her infringement, unfair competition; and dilution of the Vogue mark.

 News Source- The Fashion Law