On January 30, 2019, the luxury jewelry suppliers Van Cleef & Arpels filed suit in the United States District Court for the Southern District of New York against Nice Ice Fine Jewelers, LLC (“Defendant”). Van Cleef & Arpels’ complaint alleges trade dress infringement and unfair competition under the Lanham Act and related claims of trademark infringement and unfair competition under New York common law.
Van Cleef & Arpels claims that it has designed and sold products featuring a world-famous jewelry design known as the “Alhambra” since the late 1960s. Van Cleef & Arpels alleges that the quatrefoil design of Alhambra jewelry pieces constitutes a particular trade dress characteristic of Van Cleef & Arpels’ collection of Alhambra jewelry pieces The complaint shows an example of the trade dress at issue:
Federal Registration 4,763,030 is for the following mark:
The mark is described as “a three-dimensional configuration of a quatrefoil-shaped jewelry element. The top portion of the quatrefoil piece has an outer edge that is beaded with an inner portion that is flat as well as four larger beads positioned at central points within it. The bottom portion of the quatrefoil piece also has an outer edge that is beaded. The center portion of the quatrefoil piece is solid and not empty.”
Federal Registration 4,326,883 is for the following mark:
The mark is described as “a three-dimensional configuration of a jewelry element comprising repeated and equally spaced quatrefoil pieces each of the same size connected by chain links. Each quatrefoil piece has an outer edge that is beaded with an inner portion that is flat. Each quatrefoil piece also has four larger beads positioned at central points within it. The inner portion of the quatrefoil piece is in the color gray for shading purposes only. The chain links shown in broken lines are intended solely to indicate the positioning of the mark and are not part of the mark.”
Defendant operates a jewelry store in Charleston, South Carolina. Van Cleef & Arpels alleges that Defendant has advertised and sold jewelry imitating the Alhambra trade dress without Van Cleef & Arpels’ permission. Additionally, Van Cleef & Arpels alleges that one of Defendant’s employees described the jewelry as “the clover design look-a-like Van Cleef jewelry at a much lower price.” Van Cleef & Arpels alleges that it purchased one of the imitation necklaces for $823. Van Cleef & Arpels’s complaint provides pictures of the allegedly infringing necklace:
Van Cleef & Arpels seeks a permanent injunction ordering the Defendant to stop using the Alhambra trade dress and demands that Defendant recall and turn over all materials violating the Alhambra trade dress. Van Cleef & Arpels also seeks damages for Defendant’s alleged infringement of the Alhambra trade dress and recovery of its attorneys’ fees.
This case is interesting because the Defendant is not attempting to pass off its jewelry as genuine Van Cleef & Arpels jewelry. It advertises its product as “look-a-like” jewelry. Accordingly, the actual purchaser of the product is not confused; they know they are not buying the original, and it is unlikely they believe the product is sponsored or approved by the trademark owner. Rather, the confusion in the marketplace is “post-purchase” confusion. Other people seeing the jewelry worn by the owner are likely to believe it is the genuine product. The Second and Ninth Circuits, along with most other circuits, have held that post-purchase confusion can establish the required likelihood of confusion under the federal Lanham Act.
Van Cleef & Arpels did not allege trade dress dilution, which would require a showing that the Alhambra trade dress is famous. Under a dilution claim, if the trade dress is proven to be famous, the owner need not also prove there is a likelihood of confusion. They need only show that the distinctiveness of the famous trade dress has been impaired by a similar mark. The courts have typically raised a fairly high bar for trademark owners attempting to prove their mark is famous before they can avail themselves of the federal Trademark Dilution Act.
In this case, Van Cleef & Arpels are probably sufficiently confident in their claim of post-sale confusion that they did not feel it was necessary to go to the expense of submitting proof that their trade dress is famous.