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Tartan Wars - Burberry Sues J.C. Penney

Best known for its fashionable raincoats and winter scarves, European luxury retailer Burberry is suing against J.C. Penney Co., Inc. for copying its iconic checked pattern.

In a lawsuit filed in U.S. District Court for the Southern District of New York, Burberry has alleged J.C. Penney sold quilted jackets and "scarf coats" (patterned scarves sold with matching coats) using Burberry's trademarked "Burberry check" pattern. Burberry has used its famous check pattern on apparel and accessories for decades and holds a number of registered trademarks for the pattern in the U.S., Europe and around the globe. In the complaint, J.C. Penney also is accused of selling the products for two months after Burberry raised objections.

The Levy Group, a New York clothing distributor that allegedly supplied the products, is also named by Burberry as a defendant.

The lawsuit is seeking injunctive relief against J.C. Penney to prevent it from designing or selling products that infringe on the Burberry check pattern. It is also seeking monetary damages, in the alternative, of either $2 million for each infringed trademark, triple damages or all profits from selling the infringing garments, whichever is greater.

"By their actions, and their knowing and conscious disregard for Burberry's rights to the famous Burberry check trademarks, defendant's activities are willful," the complaint states.

Unfortunately for Texas-based J.C. Penney, this isn't the first lawsuit they have been involved in with competitors who've complained about their misconduct. In late 2015, J.C. Penney was named a defendant in two lawsuits. One case resulted in a November announcement that the company would allot $50 million in cash or store credit to settle a class action lawsuit. It had been accused of advertising lowered prices from a falsely inflated price that was never in effect. And in December, the Federal Trade Commission proposed that J.C. Penney pay a $290,000 fine after a determination the retailer falsely labeled four-packs of MukLuk men's socks as containing bamboo fibers and had microbial properties.

Why It Matters. Traditionally, trademarks consisted of words, logos or graphic designs applied to goods or packaging. However, there is no requirement that trademarks be limited to words or even to graphic designs. Over time, other elements have been used to identify the source of a good or service. Such "nontraditional" marks may consist of:

  • product designs or configurations (also referred to as Trade Dress)
  • colors
  • scents
  • sounds
  • tastes
  • touch
  • motions

In addition, rights in moving images-dubbed motion marks, which can combine colors, sounds and aspects of product designs-can be considered nontraditional marks.

Jurisdictions around the world are increasingly providing some form of protection to nontraditional marks. Among the most commonly protected marks are product designs, packaging and product configuration, collectively referred to as "trade dress."

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