Patagonia Sues Gap for Trademark Infringement on Fleece Pullover Design - Part 2
Last week, I discussed a lawsuit between Patagonia and Gap. The post focused on Patagonia’s theories and what Patagonia will need to show. This week, I want to focus on Gap’s side of the lawsuit, namely, defenses and counterclaims.
Because the case—like most trademark infringement lawsuits—is in federal court, Gap was required to specifically admit or deny each of the allegations contained in Patagonia’s complaint. Following its admissions and denials, Patagonia asserted the following affirmative defenses, including: laches and acquiescence.
In support of these defenses, Gap alleges that its affiliate, Old Navy, sold a similar product at least as far back as 2015. At that time, Patagonia contact Gap about the Old Navy fleeces and demanded Gap stop. The parties exchanged correspondence and by late 2022, Gap told Patagonia that it had no plans to stop selling the Old Navy fleece. Gap also alleges that it started using a logo similar to the accused logo back in the 1990’s. With these facts, Gap contends that Patagonia should not be permitted to bring the current lawsuit.
The laches “defense applies when a plaintiff inexcusably delays in asserting its rights, thereby unfairly causing prejudice to the defendant against whom the rights are ultimately asserted.” 3 Gilson on Trademarks § 13.12[2][a]. “Acquiescence involves assurance to the defendant, by words or conduct, that the plaintiff will not assert its rights in the mark at issue.” 3 Gilson on Trademarks § 13.12[3][a]. To oversimplify, laches may arise when a plaintiff sleeps on its rights, and acquiescence may arise when a plaintiff represents to the defendant that the plaintiff will not assert its rights.
These defenses are equitable in nature, which means they rely heavily on the facts of the case and allow a court to grant relief (a defense here) where there is no adequate relief at common law. Gap asserts interesting facts in support of its defenses. That said, these defenses are difficult to prove. It will be interesting to see how discovery develops and what additional facts come out in support of or against these defenses.
In addition to the affirmative defenses, Gap asserted a counterclaim for declaratory relief. Namely, Gap asks for a judicial declaration that Patagonia has no trademark rights in connection with the asserted trade dress. That is, Gap believes that the asserted trade dress is functional and that it has not acquired secondary meaning.
In support of the counterclaim, Gap includes photos of similar fleece jackets from: LL Bean, Lands End, Eddie Bauer, Columbia, Cotopaxi, Vineyard Vines, Faherty, Bonobos, J Crew, and Walmart. As discussed last week, Patagonia will want to show evidence that its product design is unique and that customers associate the design with Patagonia—not third parties. Evidence of numerous third-parties selling products that include Patagonia’s asserted trade dress negates that argument and supports Gap’s counterclaim.
Similarly, evidence that third-parties use the several features of Patagonia’s asserted trade dress for functional purposes (or excluding the third-parties from using those features would put the third-parties at a non-reputational disadvantage) challenges Patagonia’s argument that the trade dress is non-functional and supports the counterclaim.
This case includes interesting issues and involves parties and products that many of us are familiar with. It will be interesting to see how the case turns out.
