Yeezy Kanye “YZY” Fight Fragrance July 22, 2020 - By TFL In June 2018, YZY[1] filed a trademark application with the U.S. Patent and Trademark Office (“USPTO[2]”). The company – a Miami-based fragrance and cosmetics wholesaler – sought to register a stylized version of its name for use on “fragrances and hair care preparations,”[3] among other related products, only to be shot down by the national trademark body[4]. In a handful of formal responses to Y.Z.Y., Inc.[5]’s application, the USPTO determined that the company’s trademark was too similar to an existing mark[6], one that had been registered a year prior by a company affiliated with Kanye West[7]. In the first of several Office Actions that Y.Z.Y., Inc. received from the USPTO, an examining attorney pointed to a trademark registration for “YZY” for use on footwear that Kanye West’s intellectual property holding company Mascotte Holdings, Inc.[8] was awarded in 2017. According to the USPTO examiner’s August 2018 letter, registration for Y.Z.Y., Inc.’s “applied-for mark is [preliminarily] refused because of a likelihood of confusion” with West’s mark. [9] The parties are in the business of making and selling different types of products (at least for now), as indicated by their respective marks – footwear for Kanye and fragrances of Y.Z.Y., Inc.[10] And their marks, themselves, differ in terms of their scope/appearance – West’s mark consists of a wordmark for the letters “YZY,”[11] while Y.Z.Y., Inc.’s mark encompasses “shaded stylized letters ‘YZY’ [with] shaded circles and curved lines form a flower above the letters[12] and ornamentation above, below and between the letters.” Nonetheless, the USPTO examiner found that the marks are so similar that “it is likely that a consumer would be confused, [13]mistaken, or deceived as to the source of the goods” of the two unrelated companies. This is largely because “the literal elements of [the two] marks are identical in appearance, sound, and meaning[14],” and as a result, “are likely to engender the same connotation and overall commercial impression.” Following a couple of unsuccessful attempts by Y.Z.Y., Inc. to convince the USPTO otherwise, including by arguing that “there is no evidence of record that [West] sells any goods other than footwear,” and that his brand does not sell fragrance products, the fragrance company took its fight elsewhere: to the USPTO’s Trademark Trial and Appeal Board[15] (“TTAB”), where it sought – and is still in the midst of a quest – to cancel the existing registration[16] of West’s “YEEZY ” mark. In its August 2019 Petition for Cancellation, Y.Z.Y., Inc. claimed that it “is and will continue to be damaged by the registration of the ‘YZY’ mark,” which West first began using on footwear (according to the registration) on February 14, 2015, the day that his Yeezy 750 Boost adidas sneaker[17] was first made available to the public. The problem with that, according to Y.Z.Y., Inc., is that West first used the “YZY” name on sneakers years after it had adopted the YZY name. West’s “YEEZY” mark [18](left) & Y.Z.Y., Inc.’s stylized mark [19](right) Y.Z.Y., Inc. argued that it started using – and thus, started amassing trademark rights in – a stylized “YZY” mark in connection with its “business of manufacturing, promoting, advertising, distributing, and selling high quality hair care, skin care and fragrance goods … throughout the U.S.” since “at least as early as August 2011,” and has consistently used the mark since then. These dates are significant, as in the U.S., trademark rights are amassed by the first party to actually use a mark on specific goods/services in commerce, and not the first to merely file an application for it. Despite the fact that its use predates Kanye’s, Y.Z.Y., Inc. claims that when it decided to file an application for registration for its stylized “YZY” mark in 2018, the USPTO refused to register the mark on the basis of West’s already-existing registration. As a result, Y.Z.Y., Inc. is seeking to cancel Mascotte Holdings’ registration, arguing that “in the event there is any conflict between Y.Z.Y., Inc.’s right to use [the stylized ‘YZY’ mark] and/or ‘YZY’ [as a word mark], and [West’s] right to use YZY as registered, Y.Z.Y., Inc. clearly has priority over [West]” due to its prior usage of the mark. In other words, in requesting that the TTAB formally invalidate West’s mark, Y.Z.Y., Inc.is essentially trying to get the trademark body to clear the way for its mark to proceed in the registration process with the USPTO. (Its “YZY” application was temporarily suspended by the USPTO for the duration of the cancellation proceedings). Just a month after counsel for West’s Mascotte Holdings filed its answer in October 2019 (in which it denied the majority of Y.Z.Y., Inc.’s assertions or claimed that it was “without sufficient knowledge” to either affirm or deny them, and also set forth a couple of defenses, including “the equitable doctrines of waiver, estoppel, laches, acquiescence and/or unclean hands”), it alerted the TTAB that the parties were “actively engaged in settlement negotiations.” The matter has been suspended for much of the time since then in order to enable the parties to engage in such discussions, which have not resulted in a formal settlement to date. The latest update came via a filing by Y.Z.Y., Inc. this month, in which it requested to extend disclosure, discovery, and trial dates. All the while, the matter has taken on something of a new significance in light of the recently-announced partnership between Gap and Kanye West[20], which will bring West’s neutral-hued ready-to-wear to malls across the United States [21]as part of a decade-long tie-up. Entitled, Yeezy Gap[22], the impending new collaboration between the ailing American mall retailer and the oft-controversial rapper[23]-slash-creative director, which is expected to debut in the first half of 2021, was revealed late last month and comes complete with its newly-unveiled “YZY” [24]logo, a play on the “Yeezy” name the longstanding blue-square Gap logo[25]. While the enduring Y.Z.Y., Inc. and Mascotte’s fight is largely limited to the former’s stylized “YZY” mark and West’s “YZY” registration for use on footwear, the Gap collab stands to see the new “YZY” logo splashed on a wider range of goods, namely, apparel, and will likely see counsel for Gap seek legal protections for it, which could serve to up the ante in this fight, should Y.Z.Y., Inc. face further pushback from the USPTO – or initiate additional challenges of its own – as a result[26].
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