New Balance Is Sued Over the Latest Jaden Smith Collaboration: What Is An Incontestable Mark?

*** The writing does not, and is not intended to, constitute legal advice by any means***

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ABG, the parent company of Vision Street Wear ("Vision"), sued New Balance for trademark infringement involving "Vision Racer", its latest collaboration with Jaden Smith. According to the complaint filed with the United States District Court for the Southern District of New York, Vision Racers "bear[s] designs and symbols that are substantially and confusingly similar" to Vision's federally registered trademarks. In the previous post, I went to great lengths to hammer home a broad range of benefits that come with federal registration. In today's post, I will get more detailed and technical by introducing the notion of mark classification that the United States Patent and Trademark Office ("USPTO") employs. Also, I will explain the legal concept of incontestability for the first time as well. (Hey, now that I've covered the basics of trademark law, it's time to go beyond Trademark 101!)

When you register a mark in connection with clothing, you are essentially filing a Class 25 application. Why does classification matter? One important pillar sustaining the whole edifice of trademark is the idea that similar marks confuse consumers. Therefore, under that policy rationale, you are entitled to protect your mark from other similar marks in the same classification for the most part. If a brewing company sells a new beer named "Vision", ABG cannot go after the brewing company to enforce its trademark (assuming that ABG is not in the business of brewing beers, which, in turn, can potentially trick consumers as to the origin of a product). That's why the complaint reiterates ABG owns valid Class 25 trademarks that are incontestable. 

Okay, I didn't explain what "incontestable" means in trademark law. As a trademark owner, your mark is eligible for incontestable status if you used the mark in commerce in good faith for the 5 consecutive years after the date of initial registration. Once your mark gains this status, it becomes really challenging for potential infringers to fashion defenses. Incontestability is particularly valuable for descriptive marks (marks that merely describe a product or service - i.e. Creamy for ice creams) that need a proof of secondary meaning - the requirement that an appreciable number of consumers recognize the given mark and link it to a specific producer - because secondary meaning is assumed once descriptive marks obtain incontestability status. Bear in mind, however, that owning an incontestable mark does not translate to an automatic win in case of a lawsuit. Still, the USPTO will not move first to cancel your mark unless the registration was obtained fraudulently, which is a huge plus.

Circling back to the complaint, ABG is alleging that, given the incontestability of its VISION mark, it is legally entitled to enjoin New Balance from using the word VISION to "manufacture, advertise, market, distribute, offer for sale" Vision Racer in violation of the Lanham Act. ABG is requesting the court to order New Balance to recall all Vision Racer products circulating in the market for sale and disgorge all the profits traceable to its sale. A seemingly tiny but important point! The complaint also demands that New Balance pay treble damages pursuant to 15 U.S.C. § 1117 because its behavior is willful and malicious. An award of treble damages is not insubstantial, and that's why you see most complaints pointing finger at infringers' bad faith. I think that ABG has a strong case in its favor, but let's see how the court comes out.