United States: Kate Spade Saturday Does Not Infringe Saturdays Surf

In Kate Spade LLC v. Saturdays Surf LLC, Kate Spade sued Saturdays Surf for a declaratory judgment that the mark KATE SPADE SATURDAY did not infringe the mark SATURDAYS SURF NYC or any other SATURDAY-related mark claimed by Saturdays Surf. Saturdays Surf counterclaimed for trademark infringement.

The U.S. District Court for the Southern District of New York held that Kate Spade's mark did not infringe SATURDAYS SURF NYC or any other SATURDAY-formative mark claimed by Saturdays Surf. As there was no finding of infringement on the counterclaims, the court stated that the "declaratory judgment sought by Kate Spade [was] unnecessary." It also dismissed all of the counterclaims brought by Saturdays Surf. Kate Spade LLC v. Saturdays Surf LLC, No. 12 Civ. 9260 (MGC) (S.D.N.Y. June 17, 2013).

As a threshold matter, the court found that the mark SATURDAYS SURF NYC warranted protection, as it was federally registered and was "a suggestive mark in the context of apparel." However, the court did not find the unregistered marks SATURDAYS and SATURDAYS SURF to be protectable, as it was not persuaded that either was used alone to identify any of Saturdays Surf's products, and "Saturdays" was frequently used in connection with apparel.

Next, the court analyzed whether the KATE SPADE SATURDAY mark was likely to cause consumer confusion, under the balancing test formulated in Polaroid Corp. v. Polarad Electronics Corp. (287 F.2d 492 (2d Cir. 1961)). In applying all eight Polaroid factors, the court was "particularly persuaded by the relative weakness of the word that the two marks share[d], the significant distance between the men's and women's products and the consistent inclusion of the famous house mark, Kate Spade."

After noting that "Saturday" was suggestive for apparel but weak owing to third-party use, the court compared the parties' marks and found both similarities and differences. As to similarities, the court noted that both marks used the same font and "strongly emphasize[d] the word 'Saturday.'" Their differences included not only the appearance of the parties' logos but also the word marks themselves: Saturdays Surf's mark contained "Saturdays" as the first word, while Kate Spade's mark contained "Saturday" as the last word. The court found, however, that under well-established law of the Second Circuit Court of Appeals, which is binding on the U.S. District Court for the Southern District of New York, Kate Spade's inclusion of its house mark in the mark KATE SPADE SATURDAY "significantly reduce[d] the potential for confusion."

Turning to the proximity of the parties' products, the court found that Kate Spade's products were well known as products for women, whereas Saturdays Surf's products were designed for men. Therefore, the targeted market segments were distinct. The court was not convinced by evidence indicating that a small percentage of Saturdays Surf's customers was women. It also noted the different overall aesthetics between the brands and that the SATURDAYS SURF NYC product line included surf-inspired items that would not be associated with Kate Spade.

The court further noted the parties' distinct channels of trade. Kate Spade planned to offer its KATE SPADE SATURDAY products solely in stores that sold only Kate Spade's products, whereas Saturdays Surf's products were sold in 25 to 30 different retail stores throughout the country. While consumers could purchase products through each company's website, the court concluded that this factor also weighed in Kate Spade's favor.

After finding no evidence that Saturdays Surf planned to bridge the gap between the parties' markets, the court then found that both parties' customers were sophisticated and their products were of equal quality. It dismissed anecdotal evidence of "samples of clothing returned to both parties following photo shoots by magazines" as inconclusive as to actual confusion, and found the surveys submitted by both parties to be of limited value in this reverse confusion case.

As to Kate Spade's intent in adopting its mark, the court found that Kate Spade originally adopted its mark with no knowledge of Saturdays Surf and relied in good faith on the advice of counsel when choosing its mark and logo, which the court found to be non-infringing.

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