Kate Spade LLC v. Saturdays Surf LLC

This article previously appeared in Incontestable Trademark Newsletter - December 2013.

CASE SUMMARY

Facts

Women's apparel company Kate Spade LLC ("Kate Spade") filed an action seeking declaratory judgment that its new brand, SATURDAY, did not infringe the mark SATURDAYS SURF NYC and other SATURDAY-formative marks owned by Saturdays Surf LLC ("Surf"), a men's clothing company. Surf filed a counterclaim alleging trademark infringement and reverse confusion, claiming that Kate Spade's use of the word "Saturday" would confuse consumers by leading them to believe either that Surf's products were licensed by, affiliated with, or otherwise associated with Kate Spade, or that Surf was infringing Kate Spade's junior SATURDAY mark.

Analysis

The district court analyzed Surf's trademark-infringement claims first before turning to Kate Spade's declaratory judgment action. Addressing the protectability of Surf's alleged SATURDAY-formative marks, SATURDAYS SURF NYC, SATURDAYS, and SATURDAYS SURF, the court held that SATURDAYS SURF NYC was a valid mark based on its federal registration and use as a source identifier, but noted that the scope of protection it and Surf's other asserted marks are entitled to would depend upon the strength of the mark SATURDAYS standing alone. The court ruled that the terms "Saturday" or "Saturdays" were "best described as suggestive," and the fact that "'Saturday' is a day of the week does not necessarily make it ineligible for trademark protection." The court noted that the common usage of "Saturday" or "Saturdays" in the apparel and accessories industry detracted from Surf's distinctiveness claims, and concluded that Surf should not be permitted to monopolize "Saturday" as a trademark. The court also held that Surf did not present sufficient evidence showing use of SATURDAYS as a trademark, finding among other things that the company used the mark SATURDAYS SURF NYC more often than it did SATURDAYS alone. The court also found that Surf failed to demonstrate that it used SATURDAYS SURF as a trademark for Surf's men's clothing products, as was alleged.

Turning to the likelihood-of-confusion analysis, the court considered the strength-of-the-marks factor and found that the mark SATURDAYS SURF NYC was stronger than the mark SATURDAY standing alone, but that the strength of...