The Gap countersuit against Estee Lauder claims "100%" logo "lack[s] secondary meaning".
This article was originally published in The Rose Sheet
Executive Summary
ESTEE LAUDER's USE OF "100%" IS "GENERIC, LACK[S] SECONDARY MEANING," GAP CONTENDS in a counterclaim filed June 11 in the U.S. District Court for the Southern District of New York. The claim responds to Estee Lauder's June 4 trademark infringement lawsuit, which alleges that use of "100%" as part of the name for The Gap beauty products is likely to confuse consumers as to the source or sponsorship of the line ("The Rose Sheet" June 10, In Brief).
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ESTEE LAUDER's USE OF "100%" IS "GENERIC, LACK[S] SECONDARY MEANING," GAP CONTENDS in a counterclaim filed June 11 in the U.S. District Court for the Southern District of New York. The claim responds to Estee Lauder's June 4 trademark infringement lawsuit, which alleges that use of "100%" as part of the name for The Gap beauty products is likely to confuse consumers as to the source or sponsorship of the line ("The Rose Sheet" June 10, In Brief). Estee Lauder is currently launching Estee Lauder 100% Time Release Moisturizer ("The Rose Sheet" April 29, Marketing In Brief). The Gap is planning to introduce a line of fragrances and personal care items in its Old Navy stores using "100%" in the name. In the countersuit, The Gap asserts that Estee Lauder's use of "100%" on its products "is entitled to no [trademark] protection" because the numeral and percentage sign is "generic or descriptive and lacks secondary meaning." Furthermore, the clothing retailer stated, the trademark has had "numerous uses" by other companies "on a variety of skin care, personal care and cosmetics products." The Gap is requesting that the court forbid Lauder from "prosecuting" or "interfering in any way" with the retailer's trademark application for product names containing "100%." In addition, the clothier is seeking monetary judgment for the costs of the suit as well as "other and further relief" deemed acceptable by the court. In an affirmative defense response to Estee Lauder's trademark suit filed the same day as the counterclaim, The Gap emphasized its right to use "100%," reiterating that Lauder's use of the name on its Time Release Moisturizer is "generic and incapable of trademark protection," and would in "no way...cause confusion." In addition, The Gap denied any knowledge of Estee Lauder's December trademark application for "100%" when it submitted its own "100%" application in January. The Gap only became aware of Lauder's application in February, the firm noted, prior to the retailer's March application for additional trademarks using "100%." The Gap further denied that Estee Lauder asked the retailer not to proceed with the use of "100%." Instead, the clothier contended, Lauder had "suggested specific changes to the presentation" of The Gap's "100%" Body Care trademark "that would make it acceptable" to the cosmetics company. Thus, according to The Gap, Lauder "admitted that it finds other uses of "100%" to be acceptable," the suit states. The Gap also noted that Lauder had "represented...that it could resolve this matter" if certain changes were made to The Gap's use of "100%," which the retailer made. Based on these charges, The Gap maintained that Lauder's suit is "frivolous and should be stricken." |