Fashion Folly: Fendi and Marc Jacobs Face Roma in IP Battle – JD Supra

Fashion houses Fendi and Marc Jacobs have been sued for trademark infringement in the United States District Court for the Central District of California by another clothing company known as Roma Costumes, Inc. According to Roma Costumes, Fendi and Marc Jacobs infringed their trademark rights to Roma Costumes’ trademark when they collaborated to release Fendi’s “Roma” collection. According to Roma Costumes, the “reimagined logo” by Marc Jacobs is confusingly similar to Roma Costumes’ trademark.

According to the Complaint, Roma Costumes sells women’s clothing, accessories, and costumes throughout the United States and owns two separate trademark registrations for ROMA and ROMA COSTUMES, as the marks relate to “fitted clothing for women, namely, costumes.” Roma Clothing claims to have been using the marks for decades and spent significant sums of money marketing and promoting its clothing line in commerce. Accordingly, Roma Clothing seeks injunctive relief.

Roma Costumes also contends that Fendi and Marc Jacobs knew or should have known of Roma Costumes’ trademark rights but chose to violate them anyway. Roma Costumes does not explain how Fendi or Marc Jacobs knew or should have known of Roma Costumes’ trademark rights, but its allegation is likely a reference to the existence of the trademark registrations, which, as a matter of law, put all parties in the country on constructive notice of the owner’s rights.

Interestingly, Fendi also owns a design mark consisting of a logo with the word FENDI in large font on top of the word ROMA, which applies to clothing, handbags, wallets, suitcases, backpacks, hats, and other items. But according to the Complaint, that trademark registration includes a disclaimer that Fendi does not have the right to use the word Roma alone. Of course, if that’s true, it could be problematic in this action.

That is the Fendi mark that Fendi and Marc Jacobs “reimagined” to create the Roma logo that is at issue in this dispute. According to the Complaint, it has been promoted on YouTube, in magazines, on the Fendi website, and on various other platforms. With such widespread dissemination, Roma Costumes has good reason to be concerned if its trademark rights truly are superior to Fendi’s.

Fendi and Marc Jacobs have not yet responded to the Complaint or issued a public statement. We will keep an eye out for developments on the situation.