Supreme does not want an unaffiliated trademark to be able to register the “EMERPUS” trademark
Simply reverse the order of the letters in the word “Supreme”, slap that made-up word on clothing, and then file a trademark application for registration with the US Patent and Trademark Office (“USPTO”)? This will land you on the other side of an objection procedure VF Corp.’s own streetwear brand, Supreme. After all, that’s what has happened since Canadian company Urban Coolab Inc. filed a trademark application for “EMERPUS” for use in clothing and retail stores in May 2020.
in the an objection procedure The legal advisor initiated in January for Supremes Chapter 4 Corp. argued that Urban Coolab’s application should be blocked by the USPTO’s Trademark Trial and Appeal Board because “EMERPUS” is not an indicator of the origin of the Canadian apparel brand’s products. Instead it is “just” [Chapter 4’s] SUPREME wordmark written backwards “, which Urban Coolab uses to” associate ” [its] Goods and services with [Chapter 4’s] well-known brand SUPREME ”, an argument which is substantiated in Chapter 4 by pointing out that Supreme has used its own brand in a similar way, adorning its coveted merchandise with an upside down version of its. famous box logo.
In relation to its “exclusive federal and common law rights to the ‘SUPREME’ marks” for which it “owns” Hundreds of trademark registrations worldwide“, Chapter 4 claimed that it had used the marks” at least since April 1994 “when” the first Supreme retail store opened “. [and] offered a variety of clothing, bags and related products and accessories “with the name Supreme and the red and white rectangular logo. As for the “fame” associated with the “SUPREME” brands, Chapter 4 pointed out: (1) Its “consistent and exclusive use of the [marks] for the past 25 years in the United States and around the world including in connection with apparel, bags, accessories, skateboard decks, streetwear-related products, and other merchandise; (2) unsolicited media attention to the Supreme brand; and (3) hundreds of millions of dollars in Supreme branded merchandise worldwide. ”
With the foregoing in mind, and because of Chapter 4’s “extensive use of the SUPREME trademarks” – from the word mark to the red and white box logo – Chapter 4 claimed that these trademarks had become “famous and an asset of considerable value.” [Chapter 4] symbolizing [the Supreme brand], its quality goods and services, and its goodwill. ”Hence, the company has argued that if Urban Coolab is“ eligible to obtain registration for ” [the EMERPUS] Mark ”, the“ damage and injury [Supreme’s] Business reputation and goodwill and would hurt and impair [its] Senior rights in the ‘SUPREME’ brands. ”
In addition to “dilute”[ing] the unmistakable quality of the SUPREME brands, which were already available before the filing date of [Urban Coolab’s] Application or an alleged date of commercial use of [Urban Coolab’s] Brand ”, as the brand“ EMERPUS ”was“ so similar ”to the SUPREME brands in Chapter 4, the group stated that it was likely to cause confusion among consumers. In other words, Urban Coolab’s use of the “EMERPUS” mark on clothing and accessories will “create the mistaken impression that” [its] Goods and services come from [Supreme] or that [its] The goods and services are authorized, licensed or endorsed by, or are in any way affiliated with or connected with [Chapter 4] or the “SUPREME markings” if not.
As such, Chapter 4 claimed that its opposition should be upheld and that Urban Coolab’s trademark should be denied.
In the response it filed last month, Urban Coolab denied Chapter 4 claims, denied that registering the “EMERPUS” brand would damage the streetwear company and its corporate arm, and also denied the Chapter 4 claim that it is used the “EMERPUS” mark in order to increase the attractiveness of the Supreme brand despite the similar characters and the similar stylizations of the characters. (While Urban Coolab’s application states that its “trademark is made up of standard characters with no specific font style, size, or color,” it still has the word “EMERPUS” in white block letters in a rectangular red box, reflecting that Appearance of The Supreme box logo). The brand also raises a number of objections, including that “no likelihood of confusion, error or deception” is involved.
In the preliminary rationale of his case, Urban Coolab requested that the Trademark Trial and Appeal Board (“TTAB”) bias reject the Chapter 4 objection and “give it any further relief that may be appropriate”.
Fast forward to March 1st and Chapter 4 has requested the Trademark Authority to temporarily suspend the process, telling TTAB that “the parties are actively negotiating the settlement of this matter” and has requested that “this process” take place for 30 days suspended so the parties can pursue their settlement efforts. ”In a motion dated the same day, TTAB granted Chapter 4’s motion to suspend the matter“ subject to the right of either party to request a retrial at any time ”.
UPDATED (April 7, 2021): Following Chapter 4’s motion dated March 1 to stay proceedings on the basis that “the parties are actively involved in negotiating the settlement of this matter,” Urban Coolab’s attorney filed his application for registration on April 6 from EREMPUS. Maintaining the objection and rejecting the application, the TTAB ended the action on April 7th.