Fashion Branding: What's in a Name?

The fashion industry, more so than almost any other industry, is driven by individuals — individuals who capture the essence of a desired persona with their unique clothing and accessory designs. Individuals whose very names evoke images of glamour and style. Individuals whose names have become famous international corporate brands.

Burberry, Chanel, Gucci, Prada, Versace. Most people hear these words and think of things, not individuals. This association that your brain makes, going from the words to the collection of apparel and accessories synonymous with those words, is exactly what trademark law is meant to protect. As such, it is illegal for anyone other than the owners of the trademark to use these words, or similar words, in most commercial endeavors.

But let's not forget, these words are the names of individuals. So at the end of the day, who controls the word that constitutes a designer's name, a worldwide corporate brand, and perhaps even a third-party's brand? It probably depends on who got there first and who had the better lawyer. Because the use of personal names as trademarks in the fashion industry can be a messy situation depending on issues of trademark and contract law.

Brand vs. personal name: When both share a name
Consider the recent case between the Italian luxury shoe and accessory brand Salvatore Ferragamo and Ferragamo Winery, which was founded in California by former NFL quarterback Vince Ferragamo. Salvatore Ferragamo recently instituted suit against Vince Ferragamo, for claims of trademark infringement and dilution, for using the Ferragamo name in connection with the winery. Salvatore Ferragamo is essentially saying that the Italian shoe and accessory brand has become damaged and its value diminished because consumers will confuse the two Ferragamos and wrongfully associate the Ferragamo wine with the global shoe and accessory brand. 

Now, it's probably safe to say that Vince Ferragamo did not use his surname with the specific intent to usurp the intrinsic value of the Ferragamo name; he merely wanted to identify himself as the source of the wine. However, this does not mean that Salvatore Ferragamo is wrong. It is probably correct to say that people who know Ferragamo brand may very well be convinced that the wine is coming from the luxury fashion house. The consumer may even believe that Vince Ferragamo has some association with the Ferragamo brand. It will be interesting to see how the court rules in this case, especially given the fact that Salvatore Ferragamo had long ago registered the trademark Ferragamo name in the U.S. in connection with wine but hasn't been actively using the trademark.

The Ferragamo case represents the conflict of very legitimate interests in a personal name trademark. However, personal name trademark cases don't always seem to involve innocuous intentions. Take for example, the recent case between international fashion house Burberry and rapper/producer Perry Moise, who goes by the stage name of Burberry Perry. Burberry alleges that Perry Moise infringes its trademarks by using the stage name Burberry Perry and using its famous tartan pattern and signature "Equestrian Knight" logo. Given the use of the tartan plaid and logo, it seems pretty obvious that Perry Moise intended to adopt some of the persona that Burberry embodies.

But putting the use of the trademarks aside for a moment, what would happen if Perry Moise's actual birth given name was Burberry Perry? One would have to imagine that he would be allowed to perform and work in the music industry under his own name. Even then, though, it is a well-settled fact in the realm of trademark law that an individual does not have an unrestricted right to use their name for commercial purposes.

Just ask Chanel Jones.

Chanel Jones is a woman from Indiana who ran her own salon called Chanel's Salon. After running her business for a couple of years, and after allegedly receiving numerous cease and desist letters, Chanel Jones was sued by the Paris-based design house, Chanel, Inc. Even though Chanel Jones claimed not to have any intentions of violating trademark law, ultimately a consent judgment was entered wherein it was admitted that her use of the name "Chanel's Salon" did in fact constitute trademark infringement.  The judgment clarified that while Chanel Jones was not restricted from using her personal name solely in a personal, non-commercial capacity, as a means of identifying herself, she was barred from using the word "Chanel" in a commercial capacity and in any manner that suggests an affiliation or relationship with Chanel. This bar included using the name for trademarks, advertising, and even as metadata for search engines.

Eponymous brand vs. designer: What happens after the sale?
Another common legal issue regarding personal name trademarks is when a designer is doing business under his or her own name and then sells the business, including the personal name trademark and brand. Then, when the designer later wants to continue designing under that name, he or she finds that they no longer "own" it. The Gucci family, Joseph Abboud, and most recently the Fiorucci family have all been told that they can no longer use their personal names, or must do so with severe restrictions, in connection with developing new brands. But these restrictions that these "nameless" designers must adhere to are a product of the very deals that the designers themselves agreed to in exchange for millions of dollars.

Fashion history is littered with the stories of designers, and individuals, such as Chanel Jones, who probably could have avoided massive legal issues regarding their eponymous labels, if only they had carefully taken the time to plan out their own desires. For example, in the case of Chanel Jones, if she had utilized a more distinguishing name such as "Chanel Jones' Salon," or actively disclaimed any association with the fashion mega-brand, then she may have avoided infringing the trademark altogether. Instead, Jones can't commercially exploit the word "Chanel" anymore in connection with her businesses.

The lesson to be learned? Designers with eponymous labels should think twice when adopting, licensing or selling their brand, especially any eponymously-related trademarks. This is not to say that they should avoid the transaction altogether, but rather they should slow down and take the painstaking time, energy and money to detail how exactly they want their brand and name to be used, and what will happen after a sale.

If a designer is ready to hang up the drawing board and retire completely, then fine, sell everything for as much as you can get for it. But if there exists even the slightest inkling to continue as a designer, then a carefully laid plan should be laid out between the parties of the transaction. It may sound like a nightmare trying to work that agenda into what is probably already a fairly large and complex deal, but it is nothing compared to the nightmare of not being able to use your own name as a designer.

At the end of the day, designers who really wants to use their own name as a brand should do so. There are certainly unique advantages to doing so on top of the personal fulfillment of seeing your name on a clothing and accessory line. But these designers should remember that there are pitfalls that need to be addressed early and revisited often when using a personal name for a fashion band. Having a plan in place for the eponymous brand at each step of the way is essential.

Laura Ganoza is a partner in the Miami Office of Foley & Lardner LLP.  She primarily represents business clients, including fashion and apparel clients, in a variety of intellectual property litigation matters, including trademark, copyright and patent infringement matters, and in complex commercial litigation matters.
Kadmiel Perez was a summer associate at Foley & Lardner LLP.  He is now a 3rd year law student at Florida State University. 

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