By Robert Margolis, J.D.
Macy’s Merchandising Group’s (MMG’s) newly-developed "Maison Jules" line of women’s clothing, a private brand sold almost exclusively in Macy’s stores, does not infringe the JOULES trademark of clothing retailer Joules Limited, the federal district court in New York has held. After a bench trial, the court concluded that Joules failed to show a likelihood of confusion. The court granted MMG’s motion for a declaration of non-infringement and dismissed Joules’ infringement claims (Joules Limited v. Macy’s Merchandising Group Inc., August 2, 2016, Wood, K.).
Joules is a retailer of men’s and women’s clothing and accessories, and its products are available in stores worldwide and online. Joules owns U.S. Trademark Registration No. 3,696,021, issued in 2009, for JOULES, for use in connection with women’s clothing, footwear, accessories, and other things. The USPTO registered the JOULES mark without requiring a showing of secondary meaning. The JOULES mark appears primarily in a stylized script form. Joules targets women between 25 and 40 for its clothing, which is intended to be fashionable enough to wear at work, but casual enough for weekend wear. Rain boots and rainwear are prominent components of Joules’ clothing line.
MMG is responsible for developing and producing private brands for Macy’s—clothing lines designed and manufactured specifically for sale in Macy’s stores. Maison Jules is a private brand of women’s clothing that MMG developed for Macy’s. In November 2012, MMG filed an intent-to-use trademark application with the USPTO, seeking to register the mark MAISON JULES for use with women’s clothing and other goods. Maison Jules targets women 18-30, and like the Joules line, is intended to be dressy enough for work but casual enough for weekends. The two clothing lines are priced similarly and of approximately the same quality. The MAISON JULES mark appears on garment bags and labels in a stylized script.
After learning of Maison Jules, Joules sent a cease and desist letter to MMG, to which MMG responded by denying any potential for confusion. Joules then filed a Notice of Opposition to a pending MAISON JULES application in the USPTO, based on likelihood of confusion with the JOULES mark. Joules subsequently sued MMG for trademark infringement, and MMG counterclaimed for a declaration of non-infringement. The opposition proceeding before the USPTO has been stayed.
Trademark infringement. MMG did not dispute that two of the three elements of a trademark infringement claim were present: (1) Joules owns a valid protectable trademark and (2) MMG used its MAISON JULES mark in commerce without permission from Joules. However, the parties disputed the third element, likelihood of consumer confusion. The court evaluated likelihood of confusion under the Second Circuit’s eight-factor test and highlighted the three "most important" factors in this case: the strength of the JOULES mark, the existence of actual confusion, and the competitive proximity of the marks. The court found that all three "weigh decisively" in MMG’s favor.
Strength of mark. Because the USPTO registered the JOULES mark without proof of secondary meaning, the mark was entitled to a presumption of inherent distinctiveness. Despite that presumption, the court concluded that the strength of the mark was undercut by two pieces of evidence. First, Joules’ own expert determined that only 16.2% of consumers in the target market for the products had ever heard of Joules. Second, many other trademark registrations and websites use "Jules" or a homophone thereof in connection with women’s clothing and accessories. Evidence of such a "crowded field"—where the common word between the two marks at issue in an infringement suit is used by many parties—supports the conclusion that marks using that word lack strength. Thus, this factor favors MMG.
Competitive proximity. The targeted consumer of the two brands—women in their twenties—overlapped, but Maison Jules and Joules rarely competed directly, the court found. The brands are not sold in the same stores, and Maison Jules is sold almost exclusively at Macy’s, which does not sell Joules. The brands also have only two online locations in common, which account for only a tiny fraction of sales for Maison Jules. Further, a significant component of the Joules line is rain boots and rainwear, which is not part of the Maison Jules line. Thus, the court concluded that this factor weighs in favor of MMG.
Actual confusion. Both parties presented survey evidence, and the court concluded that the survey methods used by MMG’s expert better replicated the "situation in which the ordinary person would encounter the trademarks," and thus was more probative than the survey conducted by Joules’ expert. Joules’ expert used a "line-up" methodology, presenting both marks in sequence to survey participants, which the court stated is most appropriate when consumers encounter the two marks in close proximity, such as when they are sold in the same stores. Where, as here, the products are not sold in the same stores, this methodology may over-estimate confusion. MMG’s expert, in contrast, used the "Eveready" format, showing only MMG’s mark to participants, which is appropriate when the two marks do not appear in direct proximity in the marketplace. MMG’s expert concluded that only 0.1 percent of respondents might confuse the marks. In addition, Joules presented no evidence of actual confusion. The court concluded that this factor weighs heavily in favor of MMG.
Similarity of marks. The court also evaluated the similarity of the two marks, considering each mark as a whole. The court concluded that MAISON JULES and JOULES are more dissimilar than similar, and noted that MAISON JULES is two words, unlike JOULES, and is only used in its composite form. Particularly because the dissimilar word between the two marks—"Maison"—is the first word in MMG’s mark, the court found that the two marks are easily distinguished.
The case is No. 15-CV-3645 (KMW).
Attorneys: C.J. Veverka (Maschoff Brennan) for Joules Ltd. Chester Rothstein (Amster, Rothstein & Ebenstein, LLP) for Macy's Merchandising Group, Inc.
Companies: Joules Limited; Macy’s Merchandising Group Inc.
MainStory: TopStory Trademark NewYorkNews
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