Kate Spade LLC v. Saturday Surf LLC

A declaratory judgment that a new clothing brand did not infringe a existing brand was not necessary.

Plaintiff Kate Spade LLC (“Spade”) sued Saturdays Surf LLC (“Surf”) for a declaratory judgment that the name of Spade’s new brand, “Kate Spade Saturday,” did not infringe Saturday Surf’s mark, “Saturdays Surf NYC,” or any other “Saturday”-related mark claimed by Saturdays Surf. Surf counterclaimed for trademark infringement in violation of the Lanham Act. Surf claimed three marks were entitled to protection: (1) “Saturdays Surf NYC,” (2) “Saturdays,” and (3) “Saturdays Surf.” The court found that “Saturdays Surf NYC” warrants protection because it is federally registered in both name and logo. “Saturdays,” however, is considered a weak mark. While it can be registered, the court was not persuaded that Surf used “Saturdays” as an identifying mark. Further, no evidence was presented that Surf or anyone else ever used “Saturdays Surf” in connection with any of Surf’s products. The court looked at several Polaroid factors, including: (1) the strength of the senior mark, (2) the similarity between the marks, (3) the proximity of the products, (4) the likelihood that the senior used will “bridge the gap” between products, (5) consumer sophistication, (6) the quality of defendant’s product, (7) evidence of actual confusion, and (8) whether defendant acted in bad faith in adopting the mark.After weighing the factors, the court concluded that Surf did not show a likelihood of confusion. The court was particularly persuaded by the relative weakness of the word that the marks share, the distance between the products, and the consistent inclusion of the famous house mark, “Kate Spade,” in the Spade Saturday mark. The court GRANTED judgment in favor of Spade and against Surf in Surf's counterclaims. The declaratory judgment sought by Spade, the court found, was unnecessary.