Marc Jacobs and Fendi Sued Over “Roma” Logo
Fashion is a highly competitive industry where designers and fashion houses constantly strive to create unique designs and build brand recognition. However, as e-commerce continues to grow and design copying becomes easier, instances of trademark infringement are becoming more common.
On December 15, 2022, Roma Costumes Inc., a LA based clothing company, filed a complaint against Fendi North America, Inc. and Marc Jacobs for trademark infringement, and state and federal unfair competition.[1] The two widely known fashion brands teamed up for a capsule collection of ready-to-wear outfits and accessories.[2] The new Fendi Roma logo grabs your attention with its bold and opulent print, featuring thick white letters that contrast strikingly against dark backgrounds and fully occupying every inch of space available on the garment.[3]
The Marc Jacobs Bag with Design at Issue[4]
Undoubtedly, it embodies the essence of Marc Jacobs’ maximalist style.[5] The monochromatic logo stands out prominently on Fendi’s most recognizable shapes and designs, such as the Baguette, Peekaboo, and Fendigraphy, creating an eye-catching and dynamic visual impact.[6] Fendi published a video on its YouTube channel on December 5, 2022, presenting the capsule collection and explaining that “Marc Jacobs has infused the Fendi Roma logo with his signature downtown New York aesthetic.” [7]
Roma Costumes brought suit in the Central District of California for trademark infringement seeking an injunction and damages.[8] In the complaint, Roma states that “the goodwill and reputation for quality that Plaintiff has worked so hard to cultivate is being threatened by Defendants’ actions.”[9] They argue that the Roma logo is “confusingly similar” to the plaintiff’s registered mark.[10]
Roma Costume’s Registered Mark[11]
Marc Jacobs (“MJ”) rejects most of Roma Costume’s allegations, asserting that it has not violated any trademark rights by featuring the Roma logo on various apparel and accessories and additionally, MJ presents nine affirmative defenses to support their stance.[12]
The plaintiff filed a request for registration in 2011 for two marks, Reg. Nos. 4330234 and 4330235, both of which were approved on May 7, 2013, by the United States Patent and Trademark Office.[13] Roma Costumes Inc. claims that Fendi and Marc Jacobs have copied their designs without permission, causing confusion among consumers and diluting Roma Costumes’ brand recognition.[14]
Roma costumes says that has invested a considerable amount of money on advertising and marketing its products and services across the United States under the brand name ROMA and depends on the reputation and positive associations of the ROMA mark to generate revenue from its business operations.[15]
Other than rejecting the claims, on February 16, 2023, Marc Jacobs contended that there is no likelihood of confusion. The products compared show that the mark ROMA in Fendi’s collection always includes the “well-known and distinctive FENDI trademark.”[16] The Roma Costume mark’s strength is considered “weak and entitled to a narrow scope of protection” since it’s been used by other third parties to sell their merchandise.[17] Additionally, Marc Jacobs argues that the products offered by the two companies are dissimilar: “The accused products are costly, high-end luxury goods from a distinguished fashion house located in Rome, Italy,” while Roma’s offerings consist of affordable lingerie, outfits for clubbing, and suggestive Christmas and Halloween-themed costumes.”[18]
Moreover, they say Roma Costumes is “barred by laches” because Roma had prior knowledge or should have been aware of Fendi’s use of the term ‘Roma’ in the United States, which dates back to the 1970s, long before filing the current lawsuit. According to Marc Jacobs, Roma’s failure to take action until 2022 amounts to an “unreasonable delay.”[19]
Lastly Marc Jacobs claims that Roma’s allegations are “barred by statutory fair use” since it has not employed the term “Roma” as a trademark, but instead, uses it to describe the origin of the Fendi company and its products, serving an ornamental function.[20]
Footnotes
