Industry's major trade association is currently in a fight with two small companies over the trademark rights to the high-profile event.
Law360, New York (February 11, 2015, 5:13 PM ET) -- With New York Fashion Week set to kick off Thursday, trademark office records show that the industry's major trade association is currently in a fight with two small companies over the trademark rights to the high-profile event. The Council of Fashion Designers of America has been trying for nearly a year to federally register “New York Fashion Week” — an umbrella term for a biannual, multivenue event that CFDA says was launched decades ago by the group's founder and has been organized by the association since 1994. But the application was refused last year, owing to several already-registered trademarks: Two held by a Washington, D.C., man for “New York Latin Fashion Week” and two more for the identical “New York Fashion Week” held by a New York-based entity called Fashion Week Inc. Now, records at the Trademark Trial and Appeal Board show that CFDA has filed proceedings at the board seeking to cancel all of the rival registrations, including one case lodged last month against Fashion Week Inc. “[Fashion Week Inc.] was aware of the use of the 'New York Fashion Week' trademark by [CFDA] and its predecessors ... before registrant adopted the 'New York Fashion Week' trademark for its own use,” the Jan. 14 petition said. “Consumers are likely to mistakenly believe that registrant's services bearing the 'New York Fashion Week' mark originates with [CFDA].” As illustrated by CFDA's difficulty in winning a registration, the trademark rights to New York Fashion Week — held annually in February and September — aren't exactly cut and dry. Giant modeling agency IMG — now a unit of William Morris Endeavor — runs the “main”Mercedes-Benz Fashion Week event that's held at New York City's Lincoln Center, and it's reportedly close to acquiring the up-and-coming rival Made Fashion Week that's held further downtown. Other, smaller events are held throughout the city. IMG once held trademark registrations on both “Fashion Week” and “New York Fashion Week,” but both of them were legally abandoned — in 2010 and 2013, respectively — due to IMG's failure to file statement's of continued use with the trademark office. And neither was actually registered for organizing fashion shows: One was for software, the other for pillows and linens. CFDA, meanwhile, has never owned any registrations on the name, and it only applied for the current one in March 2014. Its trademark attorney declined to comment Wednesday on why the association held off seeking to register trademark rights it says it's held since 1994, or why CFDA, and not IMG, is seeking to register the marks. The association itself did not return a request for comment Wednesday. CFDA's concerns with consumer confusion surrounding New York Fashion Week might be well-placed, though. Fashion Week Inc., one of the companies on the receiving end of the CFDA's cancellation efforts, runs a website touting tickets to New York Fashion Week events. But the company has been reported to the Better Business Bureau for selling “scam tickets”; real Fashion Week events are generally invite-only. Fashion Week Inc. didn't return a request for comment Wednesday. CFDA is represented by Marc Reiner of Hand Baldachin & Amburgey LLP. The case are Council of Fashion Designers of America, Inc. v. Vidal, Sobeidy DBA Latin Fashion Week, case number 92060569; and Council of Fashion Designers of America, Inc. v. Fashion Week, Inc., case number 92060696, both before the U.S. Patent and Trademark Office's Trademark Trial and Appeal Board. --Editing by John Quinn.