3 September 2019TrademarksSaman Javed

New Era asks court to dismiss TM suit by Christian brand

US-based cap maker New Era has asked a district court to rule that its products do not infringe a Christian brand’s common law trademark rights.

The motion, filed at the US District Court for the District of Massachusetts on Thursday, August 29, said God’s Era had failed to provide credible evidence to support its claim of infringement.

“Instead, discovery has revealed that God’s Era failed to do a pre-suit investigation to confirm that its original factual allegations had evidentiary support,” the filing said.

In a trademark infringement, dilution and unfair competition complaint at the same court in May 2018, God’s Era argued that New Era had copied its “street style” and changed its branding in response to the publication of a trademark application by God’s Era.

According to the original complaint, a New Era design which reads ‘New Era Fear of God’, infringes God’s Era’s trademark rights.

But, New Era denied these claims and said its allegedly copied design was created by a third party, prior to the publication of God’s Era’s trademark application.

“God’s Era’s story was manufactured and is demonstrably false,” New Era said.

In its argument to the court, New Era said God’s Era’s common law trademark rights, if “it has any rights at all”, are limited to the Boston area.

God’s Era has sold between $2,000-$10,000 worth of apparel over a four-year period (it has not maintained complete records), and more than 90% of those goods were sold in person, by a single individual, to customers in the Boston area, New Era said.

It said its collaboration with the third party which created the accused design, Fear of God, started in 2016.

“The accused caps were sold through outlets and locations foreign to God’s Era, at luxury brand prices exponentially higher than those charged by God’s Era,” the filing said.

Additionally, New Era said “there is no evidence of actual confusion” between its products and God’s Era’s products, and “no evidence of bad faith”.

Citing previous case law, it said that in the absence of trademark registration, “Both parties have the right to expand into unoccupied territory and establish exclusive rights by being first in that territory”.

“In effect, it is a race between the parties to establish customer recognition in unoccupied territory.”

God’s Era has produced “no evidence of any consumer recognition” of its trademark or brand, it said.

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