SARAH clothing mark stitched up by trade dress claim

In Dana Braun Inc v SML Sport Ltd (03 CIV 6405 (SDNY 2003)), the US District Court for the Southern District of New York has refused the plaintiff's motion for a preliminary injunction preventing use of the mark SARAH MCKENZIE. However, the court did issue an injunction based on the plaintiff's trade dress infringement claims.

Dana Braun Inc, which owns the federally registered trademark SARAH ARIZONA for women's clothing, filed a motion for a preliminary injunction against SML Sport Ltd, claiming that its use of SARAH MCKENZIE for similar types of clothing constituted trademark and trade dress infringement.

The US District Court for the Southern District of New York found that SARAH MCKENZIE was not confusingly similar to SARAH ARIZONA, even though both marks were used for women's printed skirts and coordinated sweaters. The court expressly acknowledged that a number of third party companies own SARAH-based marks for women's apparel. It focused repeatedly on the mark SARA CAMPBELL used for a line of women's clothing, including printed skirts and colour coordinated sweaters, which was in competition with Dana Braun's SARAH ARIZONA line. In denying the motion for preliminary injunction based on the trademark infringement claim, the court held that "a mark does not infringe another mark where the common word between the two marks is used by many parties; in other words, where there is a 'crowded field'". Although the court recognized that not all the other SARAH or SARA marks were used on competing women's clothing lines, it considered that these other marks were contributing to the "crowded field" and defeated the claim of trademark infringement.

However, the fact that the SARAH ARIZONA and the SARAH MCKENZIE trademarks were not found to be confusingly similar did not assist the defendant as to the claim of trade dress infringement. Rather, the court issued a preliminary injunction for trade dress infringement based on the "striking similarities" between the SARAH MCKENZIE advertisements and the established look of the SARAH ARIZONA catalogues. The court held that the protected SARAH ARIZONA trade dress consisted of catalogue covers featuring:

"printed skirts and colour coordinated sweaters, displayed with the SARAH ARIZONA mark in a block, capital letter, open-R typeface, with spaces between the letters horizontally across the middle of the model wearing the skirt and sweater."

Recognizing that certain of the SARAH ARIZONA catalogue covers' trade dress elements could be construed as functional, the court nonetheless found the "entire presentation" and, particularly the use of the open-R font, distinctive. The SARAH MCKENZIE advertisement featured:

"the same widely spaced, block letter, open-R font, in the same place [...] and in the same relationship to the model wearing a reversible printed skirt and coordinated seed stitched sweater with the same background."

Significantly, the court held that the use of the identical open-R font constituted evidence of deliberate copying and intent to cause confusion, justifying a preliminary injunction against further dissemination of the SARAH MCKENZIE advertisements.

Rochelle D Alpert, Morgan Lewis & Bockius LLP, San Francisco

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