Kate Spade Scores Big Win in “Saturday” Trademark Dispute

By Joseph Mandour on January 21, 2014

Trademark InfringementOrange County – A federal judge’s ruling kicked 2014 off to a good start for Kate Spade.  The holding cleared the high end retailer’s new brand “Saturday” from allegations of trademark infringement brought by a men’s apparel company called Saturdays Surf NYC.  The dispute began when Kate Spade filed a request for declaratory judgment that its Saturday brand did not infringe Saturdays Surf NYC.  In response to the filing, Saturdays Surf LLC, filed a counterclaim citing trademark infringement on the part of Kate Spade’s Saturday.

In its counterclaim, Saturdays Surf NYC LLC stressed the point that it believed that Kate Spade’s use of “Saturday” would confuse buyers into thinking that Saturdays Surf NYC was somehow affiliated with Kate Spade’s Saturday line.  The district court considered this claim of “reverse confusion” and instead found that the use of the word “Saturday” is so common, especially in referring to weekend-wear in the retail apparel industry, that Saturdays Surf NYC could not have exclusive rights in it.

The court also considered Kate Spade’s apparent good faith in the matter, by noting that testimony showed that Kate Spade was unaware of Saturdays Surf NYC in creating its own Saturday brand.  This, taken in combination with the court’s finding that “Saturday” is a common term in the industry, led the judge to side with Kate Spade on Saturdays Surf NYC’s assertions of trademark infringement.  Further, the court found that Kate Spade’s request for declaratory judgment need not be addressed because the likelihood of confusion between the two brands was low, with Saturday being a woman’s apparel brand and Saturdays Surf NYC specializing in menswear only.

Both companies are based out of New York City and have dedicated followings.  Saturdays Surf NYC opened its first of four retail branches in 2009 and carries an impressive array of men’s clothing, grooming supplies, surf equipment, art and coffee.  Kate Spade’s Saturday, on the other hand, was created as a secondary line by the luxury goods manufacturer as a more casual counterpart to its flagship Kate Spade brand.   Items such as t-shirts, jeans and the staple “weekender bag” are central to the Kate Spade Saturday label.

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