H&M recently has been releasing new clothing styles that give a nod to the fashion of the 90′s. But one of their recent items, appropriately named “Sweatshirt with Motif,” has been under fire for trademark infringement. Very specifically, Wildfox Couture, a Los Angeles-based fashion brand, claims that H&M’s gray crewneck sweatshirt infringes on their trademark WILDFOX as it features a design for a fictitious basketball team called the “Toronto Wildfox”. Subsequently, Wildfox demanded H&M stop selling their sweatshirts or face litigation from Wildfox.

Then on October 16, H&M filed an action for declaratory judgment of the non-infringement of Wildfox’s trademark in the Southern District of New York. H&M claimed that the design was meant to invoke a basketball team look and that “Wildfox” was selected arbitrarily as the name of a fictitious team based in Toronto. H&M claimed that Wildfox’s continuous threats of litigation placed a “cloud” over H&M’s rights to continue selling Sweatshirt with Motiff. Making good on their promise of litigation, on November 7, Wildfox filed a trademark infringement suit against H&M in the Central District of California.

In a similar vein, on October 19, the EDM DJ duo Classixx has also filed a trademark infringement suit in the Central District of California against H&M after several Twitter users spotted a sweater at H&M with the word “CLASSIXX” on it.

For a plaintiff to establish trademark infringement claim, the Ninth Circuit has listed three factors that the plaintiff must prove by a preponderance of the evidence: (1) the plaintiff’s symbol or term must be a valid protectable trademark; (2) the plaintiff owns the symbol or term as trademark; (3) the defendant’s used symbol or term that is similar to the plaintiff’s and was used without the consent of the plaintiff in a manner that is likely to cause confusion among ordinary consumers as to the source or sponsorship.

Additionally, the third element’s likelihood of confusion must be evaluated with the Ninth’s Circuit Sleekcraft Test. The Sleekcraft test lists nine factors, which among these include the strength  of the plaintiff’s mark (meaning how recognizable to the public is the mark as an indication of the origin of the plaintiff’s good), the similarity of plaintiff and defendant’s marks, actual confusion, and the defendant’s intent (whether the defendant knowingly used the plaintiff’s mark).

Thus, it is in this third element that the real fight will be. In their action for declaratory judgment, H&M claimed that their use of the term “WILDFOX” was “ornamental” and, therefore, “does not infringe [on] Defendant’s rights in their WILDFOX trademark.” In other words, the use of the word “WILDFOX” was just for decoration and no typical consumer will confuse the sweatshirt as Wildfox’s trademark or think that the two brands collaborated in some way.

This argument that H&M puts forth seems reasonable given that their Sweatshirt with Motif has an entire basketball logo to which “WILDFOX” is only one element (the smallest element, in fact). It does seem that this use is just a small ornament to an overall larger design. However, this argument might make a little less sense for the Classixx sweater in which the sweater only features the word “CLASSIXX” overlapping three-times. If the court were to rule in H&M’s favor for Wildfox, could H&M assert a similar case against Classixx and claim that the design is merely “ornamental”?

This “ornamental design” argument seems very broad; should the court find in H&M’s favor, it seems that trademark protection will significantly weaken as anyone can just print others’ trademarks and claim that it is for decorative purposes.

H&M’s action for declaratory judgment might be better understood and interpreted as negating the “actual confusion” and “knowing use” elements of the Sleekcraft test. The “ornamental design” might be read as H&M’s overall defense that there was no intent or knowing use. Their claim is that they arbitrarily picked “WILDFOX” and only wanted to make some generic basketball logo shirt. In other words, they only made a design choice and did not knowingly try to use Wildfox’s label.

The “ornamental design” argument might also be interpreted as H&M’s claim that no one is actually confused about the source of their sweatshirt. There does not seem to be any instance of actual confusion nor does there seem to be any opportunity for such confusion. The gray sweatshirt is only one design option out of four, all which are labeled generically as Sweatshirt with Motif. The other three options available are equally generic in wording and logo. Thus, it’s not that the use is “ornamental” that there is no such trademark infringement, but that on the facts of this specific case, there is just not a high likelihood a typical consumer would see this sweatshirt on H&M and conclude that this was actually related to Wildfox in some way.

Of course, to interpret H&M’s argument in this way would leave H&M in the fire for its case with Classixx because there is evidence of actual confusion. Many Instagram users had tagged Classixx in posts about the sweater with captions asking Classixx if they were selling their merchandise at H&M stores. H&M’s saving grace though is that a few Instagram posts may not actually be enough to prove actual confusion.

Additionally, unlike in Wildfox, H&M’s argument against knowing use is weaker against Classixx because they consistently play Classixx’s songs in the store and, thus, know about Classixx. But that argument might fall into the debate of whether a store employee’s music selection for the store can be enough to signal the knowing use of H&M’s design team.

In any case, the “ornamental design argument” could signal a weakening of trademark protection in fashion as it might also raise subsequent issues of whether brands like H&M and Forever 21 can use Gucci trademark stripes, but claim they were only doing so for ornamental purposes. Thus, it certainly would be a slam dunk for H&M if they could win on their “ornamental design” argument.

–Audrey Yue

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