Harley-Davidson sues Urban Outfitters in TM suit

09-01-2017

Harley-Davidson sues Urban Outfitters in TM suit

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US-based motorcycle manufacturer Harley-Davidson has sued multinational clothing company Urban Outfitters in a case centring on bodysuits sold by the clothing retailer.  

Harley-Davidson filed the lawsuit (pdf) at the US District Court for the Eastern District of Wisconsin, Milwaukee Division, on Friday, January 6.

The motorcycle manufacturer said that Urban Outfitters had infringed its trademarks, violated section 32(1) of the Lanham Act for trademark counterfeiting, unfairly competed and falsely designated origin.

In addition, Harley-Davidson argued that the clothing company had diluted its trademarks and was in breach of a contract between the companies.

The motorcycle manufacturer also asked for a permanent injunction against the retailer.

The bodysuits, called “FPV Harley Bodysuit”, had been “altered and reconstructed” from genuine Harley-Davidson products, according to the claim.  

Harley-Davidson added that this isn’t the first time Urban Outfitters has infringed its products. The company sued Urban Outfitters for trademark infringement in March 2014.

The suit centered on genuine Harley-Davidson t-shirts, tops and shirts that had been “altered” by the clothing company.

According to the claim (pdf), products had been cut and mutilated by Urban Outfitters, shirts had been shredded and the side seams of shirts had been cut open.

The companies entered into a settlement agreement in May 2014, where Urban Outfitters “agreed that it would not knowingly make, promote, sell, or distribute Harley-Davidson apparel products that have been ‘altered or reconstructed’”.

However, Harley-Davidson argued that the retailer “did not enter into any agreements” releasing Urban Outfitters from any claims relating to these trademark violations.

Harley-Davidson has used and promoted its ‘Harley-Davidson’ name since as early as 1903 and has used its bar and shield logo since 2010. Its trademarks cover goods such as sunglasses, sweaters, motorcycles and clothing.

The motorcycle company produces its own apparel and has “numerous” licensees in the US that are authorised to sell a wide range of merchandise.

Harley-Davidson claimed that the bodysuit infringed its marks in “two ways”.

Firstly, some of the bodysuits are made from genuine Harley-Davidson products that have been “altered” into new products that bear the company’s marks.

Secondly, some of the products appear to not be genuine Harley-Davidson products and do not bear any of the Harley-Davidson marks, but have been sold with labels that bear the ‘Harley’ mark.

Harley-Davidson is asking for a preliminary injunction, profits, statutory damages of $2 million per mark, compensatory damages, punitive damages, costs, attorneys’ fees, a jury trial and other relief the court may deem appropriate. 

Harley-Davidson, Urban Outfitters, trademark, counterfeiting, clothing, Lanham Act, unfair competition, trademark dilution, fashion,

WIPR