Following a Quiet Settlement, Goat to Rebrand and Goat Group to Take Trademarks

For the past 20 years, Goat has been making its name as a leader in “luxury investment pieces made from the finest cashmere, silk and wool,” boasting fans that range from Victoria Beckham and Gwyneth Paltrow to Kate Middleton and Meghan Markle. Now, after two decades in business, it is rebranding. While the company’s offerings, its team – many of whom the label’s founder Jane Lewis says that she has worked with for more than 15 years – and the font of its stylized word mark will remain the same, Lewis revealed in a number of Instagram posts this month that her London-based label is preparing to take a new name; it will become known as Jane. As for what is behind the new moniker? It appears that another – albeit unrelated – company named Goat made Lewis an offer that she could not refuse.

Hardly an unprompted turn of events, Lewis’s announcement that her brand will change its name comes on the heels of the settlement of a years-long legal battle that Goat initiated against 1661, Inc., the parent company of Goat Group, the swiftly growing sneaker – and fashion – marketplace. The trademark infringement and breach of contract case got its start in December 2019 when Goat filed suit against 1661, Inc., arguing that the similarly-named resale upstart  was  “willfully disregarding” its well-established intellectual property rights, namely, its rights in the “Goat” trademark in the U.S., which Goat asserted that it has consistently used since 2003 and has “spent a substantial amount of time, money, and resources advertising its apparel under” that name.

Pointing to examples of potential confusion, Goat asserted in its complaint, as first reported by TFL, that its website has been bombarded with searches for terms like “Yeezy’” – the name of a collection of sneakers produced by adidas and Kanye West – which “is the most popular search term on its website,” despite the fact that the British fashion brand does not sell athletic footwear. Similarly, in a testament to the actual confusion that has existed between Goat and Goat Group, Lewis’s company alleged that its e-commerce site has “received searches for ‘Supreme shirt,’ ‘Gucci belt,’ and ‘hoodie,’ each of which is an item of apparel or an apparel-related accessory sold by 1661.”

The parties’ history dates back before Goat filed suit against 1661, Inc. In fact, Goat and Goat Group had previously clashed behind the scenes due to their same-names and the resulting risk of consumer confusion, prompting the parties to enter into a co-existence agreement in April 2017 in order to alleviate potential confusion in the marketplace and enable the two companies to co-exist peacefully. As Goat asserted in its suit, in furtherance of the agreement, Goat would “continue to use its GOAT mark for goods and services related to clothing,” while 1661, Inc. would “limit its use of its GOAT mark [within that class of goods] to services in connection with its online marketplace … ‘athletic and sporting footwear,’ i.e., sneakers.”

That peace-keeping arrangement ultimately went south, however, in July 2019 when Goat claims that it refused to consent to 1661, Inc.’s request to use the GOAT mark on clothing in addition to athletic and sporting footwear. As Goat alleged in its complaint, “Rather than negotiating a license agreement,” which Goat says that it offered, 1661, Inc. opted to “willfully disregard [Goat’s] trademark rights and … the 2017 consent agreement,” and in October 2019, began selling its own GOAT branded clothes through its mobile app anyway in connection with an ambitious attempt to expand its offerings beyond sneakers.

Interestingly, the court was not persuaded by 1661, Inc.’s argument that it was on the right side of the law because it merely “operat[es] as a ‘middleman’ between buyers and sellers” and that it “does not itself manufacture or sell the products” on its platform.” (This mirrors the argument that Amazon has routinely made in connection with the lawsuits filed against it over products offered up/sold on its third-party marketplace site).  Instead, Judge Paul Engelmayer of the U.S. District Court for the Southern District of New York sided with Goat, and granted its motion for a preliminary injunction in late September, thereby, barring Goat Group’s corporate entity, 1661, Inc. from selling apparel on its buzzy resale marketplace due to the similarity of the two brands’ names and the resulting likelihood that consumers will confuse the two like-named but unaffiliated parties’ goods/services and cause Goat to suffer “irreparable harm.”

Within a matter of weeks after the court handed down its preliminary injunction order, the parties settled their differencesp out of court, without disclosing the terms of the deal. A read between the lines suggested that 1661, Inc. was walking away with rights in the Goat name, though, and presumably looking to piggyback on its status as “the leading and most trusted sneaker marketplace in the world” to push forward into the fashion space. In a headline-making announcement in January, for example, Goat Group revealed that it welcomed a “strategic investment” from Groupe Artemis – the controlling shareholder of Gucci, Balenciaga, Saint Laurent, and Bottega Veneta’s parent company Kering, noting that it was “continu[ing] its expansion in fashion apparel and new categories.”

At the same time, GOAT co-founder and CEO Eddy Lu said that the Groupe Artemis investment – which followed from a Series E round of $100 million announced in September 2020 that valued the company at $1.75 billion – “is another important step as we double-down on our expansion in apparel and new categories,” noting that the Artemis “will help us further accelerate our growth, particularly in fashion apparel, as we continue to drive forward with our mission to bring the greatest products together from the past, present and future.”

Against that background, Lewis’s revelation that Goat Group has acquired the Goat trademark from her makes sense. In an interview with FashionUnited, Lewis stated early this month that the trademark sale – and corresponding rebrand of her company – is “born out of a good resolution” with Goat Group, noting that in light of a favorable outcome in court (at least on a preliminary basis), she was “not coerced or pressured into anything,” and instead, has opted to change the name.

In accordance with the parties’ agreement, Goat has until November 2021 to formally complete the rebrand. As for how much Goat Group paid to acquire the rights in the Goat name for use on apparel and related goods/services, and presumably (and not insignificantly), the domain names and social media handles, that remains undisclosed.

Source：www.thefashionlaw.com

Editor：IPRdaily-Vapor