Beyoncé and Topshop successfully expedite trademark dispute over ‘Ivy Park’

Beyoncé and Topshop have succeeded in speeding up a trademark dispute over the mark ‘Poison Ivy Park’ in the US.

The mark was filed at the US Patent and Trademark Office (USPTO) by California-based 47 / 72 Inc in April 2016 on the same day that Beyoncé released her Ivy Park clothing line in collaboration with UK retailer Topshop.

In September that year, ‘Poison Ivy Park’ was published, before Parkwood Topshop Athletic (the company set up for the clothing venture) quickly responded with a trademark opposition based on ‘Ivy Park’.

The applied-for mark, US number 87,001,440, covers international class 35, which includes online retail store services featuring shirts, hooded sweatshirts, mobile electronics cases and tote bags.

Parkwood claimed that the mark would create a likelihood of confusion, dilution by blurring, dilution by tarnishment and deceptiveness.

The mark ‘Ivy Park’ is registered for class 3 (nail varnishes and lipsticks); class 14 (jewellery); class 18 (bags); class 24 (clothing including sports shirts); and class 35 (retail store services).

“Opposer’s ‘Ivy Park’ branded clothing, which has been closely identified with Beyoncé’s celebrity persona, has been the subject of significant unsolicited media attention, including hundreds of news articles,” said the opposition.

In March, 47 / 72 responded, claiming that its mark was different in appearance and spelling, created a different commercial impression and, unlike Beyoncé’s mark, contained the word ‘Poison’.

The clash has continued to drag out. In September 2017, Parkwood’s lawyers submitted a requestto compel 47 / 72 to answer its questions, along with a request to extend time to disclose its expert.

Parkwood said that 47 / 72 has “flatly ignored” discovery requests and subsequent communications.

“Without those responses, this opposition has effectively been placed at a standstill,” added the joint venture.

Nearly a week later, 47 / 72 responded with a doctor’s note, which stated that Michael Lin (the founder of 47 / 72) had been receiving therapy in a Taiwanese clinic since the beginning of September.

Parkwood hit back in another motion: “Then after months of silence, applicant filed an ostensible doctor’s note with the USPTO (without any explanation) and emailed that same document to Parkwood’s counsel, claiming that applicant ‘just need[ed] more time to reply’.”

Beyoncé’s company went on to say that although the note made general claims about Lin suffering from depression, it didn’t state that he had been “unable to read, write, access a computer, engage in telephone calls, or perform any of the other tasks required to respond to Parkwood’s discovery requests”.

On November 1, Elizabeth Winter, interlocutory attorney, suspended the proceedings pending disposition of Parkwood’s motion to compel the discovery responses.

Then, on Tuesday, November 7, Winter reset the trial dates.

 

As carried in IP

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