April 10, 2007 – LAWFUEL – Law Firm Newswire – Chadbourne & Parke LLP has won a trademark dispute on behalf of Netherby Ltd., the owner of the worldwide rights to the Gloria Vanderbilt trademarks.
A New York federal district court has ruled that the GLO trademarks — a junior line marketed by Jones Apparel Group which includes “GLO Jeans” and “GLO Girl” — is “associated with” the Gloria Vanderbilt brand for the purposes of the parties’ royalty agreement. Jones Apparel acquired both brands in 2002.
In 1988, Netherby sold to Jones’ predecessor the rights to the Gloria Vanderbilt trademarks in five countries, the United States, Canada, Brazil, New Zealand and Australia. In 2004, Netherby sued Jones Apparel and its subsidiary, Jones Investment, alleging breach of the 1988 agreement which required Jones to make royalty payments to Netherby based on sales of goods bearing the Gloria Vanderbilt mark and any other mark “associated with Gloria Vanderbilt.”
Netherby also alleged that Jones was precluded from selling GLO products outside of the five countries covered by the 1988 Agreement. In January 2001, Jones’ predecessor had launched the GLO brand which is targeted to women 17 to 21 years old.
Following a four-day trial, in an April 5, 2007 opinion U.S. District Judge Gerard E. Lynch ruled that GLO was associated with Gloria Vanderbilt and, thus, that GLO was subject to the 1988 Agreement. The court ruled that Jones was obligated to pay royalties to Netherby on GLO sales. The court further found implicit in this ruling that Jones was precluded from selling GLO products outside the five countries.
In finding that the GLO brand is associated with Gloria Vanderbilt, the court looked to a number of factors, including the marketing for GLO which linked the two brands, and references in trade and mainstream press to the GLO brand as the Gloria Vanderbilt “junior line.” The court rejected Jones’ argument that any past association between GLO and Gloria Vanderbilt was to “Gloria Vanderbilt the company,” and not Gloria Vanderbilt the person.
The court also found that Jones had breached its obligation to provide Netherby with samples of its Gloria Vanderbilt lines and directed Jones to perform those obligations in the future.
Chadbourne litigation partner Thomas J. Hall and associate JaeYoun Kim represented Netherby in this case.
