Is it Pretty? Will H&M Assert a “Classixx” Ornamental Defense to Claims of Trademark Infringement?

On October 19, 2017 Hush Hush Sound Inc, Michael David, and Tyler Blake (collectively “Plaintiffs”) also known as the Electronic dance music duo “Classixx” filed suit in the District Court for the Central District of California against well-known fast fashion retailer H&M for trademark infringement.

Plaintiffs own U.S. Trademark Registration No. 4,319,801 for the word mark CLASSIXX which issued on April 16, 2013 and covers “Musical sound recording and musical video recordings in all media” in Class 9 and “Entertainment services in the nature of live musical performances by a performer or group” in Class 41. Like many performers, Plaintiffs market and sell a wide range of apparel and merchandise under the trademark CLASSIXX. Prior to filing suit, the Plaintiffs claim to have sent a cease and desist letter to H&M. However, no resolution was reached and Plaintiffs filed suit.

The complaint alleges that, without authorization from Plaintiffs, H&M manufactured, sold, and advertised clothing featuring Plaintiffs’ CLASSIXX trademark. In their complaint, Plaintiffs claim the word marks are identical and thus likely to create consumer confusion as to the source of the goods.

H&M Garments CLASSIXX Trademark

Furthermore, Plaintiffs allege that H&M had constructive notice of their federally registered trademark and were aware of Plaintiffs and their trademark due to the performance of Classixx’s music in H&M stores around the world. See Paragraph 20 of the Complaint (“On information and belief H&M was also aware of Plaintiffs and their Trademark due to, inter alia, the performance of Plaintiffs’ music in H&M’s retail stores around the world.”).

In addition to trademark infringement, Plaintiffs allege that H&M misappropriated their likeness and rights of publicity, and engaged in unfair competition under California state law. Plaintiffs claim that as the musical group Classixx, they have an enforceable right in their identity and likeness. Moreover, they allege that H&M’s unauthorized exploitation of their trademark has created a false or misleading representation and deceives the public in believing that the group Classixx is connected to or sponsors the goods sold at H&M. Plaintiffs claim that this in turn causes actual confusion in the marketplace.

Among Plaintiffs’ several demands for relief are a permanent injunction enjoining H&M from using the CLASSIXX trademark, an accounting of all profits H&M realized from their use of the CLASSIXX trademark, damages allowed under California common law for violation of common law rights of publicity, and a court ruling requiring H&M to deliver all remaining inventory bearing the CLASSIXX mark to Plaintiffs for destruction.

A recently filed declaratory judgment action filed by H&M in the Southern District of New York may give an insight into H&M’s defense in the Classixx case. In the New York case, H&M is seeking a declaration from the court that it does not infringe the rights of Wildfox Couture and Wildfox Couture’s rights in the WILDFOX mark.

According to the complaint Wildfox Couture, owner of U.S Trademark Registration No. 4,093,309 for the mark WILDFOX for “bottoms; dresses; jackets; scarves; swimwear; tops” in Class 25, repeatedly threatened to take action against H&M for trademark infringement for selling an H&M sweatshirt containing a graphic design with a logo of the “Toronto Wildfox” - a fictitious basketball team. The H&M product can be seen below:

In the Wildfox complaint, H&M argues that its use of the word WILDFOX emblazoned on the front of the sweatshirt is ornamental, and consumers would not perceive it as a trademark identifying the source of the product. H&M contends that there can be no likelihood of confusion between its design and the Wildfox trademark, because the average consumer would not associate H&M’s sweatshirt logo with Wildfox Couture. See Paragraph 21 of the Complaint (“H&M’s use of the term ‘Wildfox’ was merely an element of an ornamental design that consumers would not likely perceive as an indicia of origin, does not constitute a ‘trademark use,’ and is not likely to cause confusion or deception.”).

H&M’s argument that its use of the word WILDFOX is ornamental rather than source identifying may shed light on how it plans to defend the Classixx suit. It will be interesting to watch these cases. If H&M prevails, the floodgates may open for other retailers to make similar “ornamental” designs.