Even small, independent businesses in California could face trademark infringement lawsuits from major corporations. In one such case, Vogue, the famous fashion magazine owned by Advance Publications, has filed a lawsuit for trademark infringement against a 26-year-old designer and activist who created a line of shirts and other items bearing the words “Black Vogue” in a similar font to the magazine’s famous header.
The designer filed a trademark application for “Black Vogue”, but it was rejected because it was too similar to the existing trademarks for the magazine. According to Advance Publications’ lawsuit, the company contacted the designer when it learned about the trademark application, requesting that she stop pursuing it. After her refusal, the company also sent a demand letter, telling her to stop selling the t-shirts, sweatshirts and other items bearing the “Black Vogue” insignia.
The lawsuit seeks an injunction preventing her from using the name as well as any profits made from sales of the clothing. The lawsuit alleges that the merchandise is likely to cause consumer confusion and that people may think that it is officially licensed by the magazine’s publishers. The plaintiff also argued that the resulting confusion could cause damage to the value and reputation of the Vogue trademark by diluting its uniqueness. Another Advance Publications magazine, Teen Vogue, had earlier run positive coverage about the activist and her project, and another of her designs was featured on a Vogue magazine street style gallery. Of course, fashion editorial decisions are often separated from legal concerns.
Business owners should protect their trademarks; if they allow other parties to use them without a license, they could risk losing the mark altogether. This is one reason why many trademark holders pursue an aggressive strategy on questions of infringement. Companies involved in a trademark infringement dispute can work with an intellectual property lawyer to protect and enforce their rights.