The battle between “Kade Spade” and “Saturdays Surf NYC” has reached a climatic conclusion (or has it?) in a recent court ruling in favor of Kate Spade, finding that there was no likelihood of confusion between the two marks. However, Saturdays Surf is not standing down that easy. It hopes to appeal the court’s ruling.
Kate Spade is a high-end fashion brand, well known for its designer purses and shoes. Kate Spade tailors to women in particular. Saturdays Surf sells men’s clothing and various products and accessories for surfing (they also have a little coffee shop at their SoHo location, which I love to go to). I own several Kate Spade items, and I have purchased Saturdays Surf products for my male friends and colleagues. They are very different products tailoring to very different demographics.
Kate Spade recently announced that it was launching a lower-priced line called “Kate Spade Saturday.” Saturdays Surf demanded that Kate Spade halt the launch of their line because it felt the use of the word “Saturday” would likely cause confusion amongst consumers in the market. Kate Spade responded swiftly by being the first to file in court, claiming that it did not infringe Saturdays Surf’s trademark, stating: “We explained our complete good faith in the selection of the name, described the Kate Spade Saturday concept to [Saturdays Surf] and why consumers will not be confused and offered to answer any additional questions they may have.” Saturdays Surf filed a counterclaim of trademark infringement and offered several arguments as to why the two marks would likely cause confusion: the two brands are similar in name, they are both in the business of selling clothing, and the logo fonts are eerily similar.
The court ruled in favor of Kate Spade. Judge Miriam Goldman Cedarbaum concluded: “Saturdays Surf NYC has not shown a likelihood of confusion by a preponderance of the evidence. I am particularly persuaded by the relative weakness of the word that the two marks share, the significant distance between the men’s and women’s products, and the consistent inclusion of the famous house mark, Kate Spade, in its Kate Spade Saturday mark.” Saturdays Surf does not agree with the ruling and believes that confusion exists in the marketplace, and will only become more of a problem as Kate Spade Saturday increases its advertising presence around the globe. Saturdays Surf is looking to file an appeal.
Although the use of the word “Saturday” is in both marks, this alone is not enough to establish likelihood of confusion. In order to achieve trademark protection, consumers must recognize the mark as an indicator of source, otherwise known as distinctiveness. “Saturday” is the name of a day of the week, and by itself is not sufficiently distinctive for trademark protection. However, when used in conjunction with other words, as Saturdays Surf and Kate Spade Saturday has done in this case, it can achieve trademark protection. Saturdays Surf’s argument that the two brands are similar in name has a fatal flaw. As Judge Cedarbaum pointed out, Kate Spade Saturday includes its famous house mark, Kate Spade, which is a very well known women’s fashion label. When consumers see the mark Kate Spade, they recognize it as a source indicator for the women’s fashion label. Additionally, Saturdays Surf’s mark has the word “Surf” in it, which is very different from the words “Kate Spade.”
Both companies are in the business of selling clothing, but the markets are vastly different. Kate Spade Saturday is a women’s brand, and Kate Spade is well known for selling purses and shoes. Saturdays Surf is a men’s brand, and is well known for selling men’s clothing, accessories, and surfing products. It is also important to note that Saturdays Surf’s market is very niche; it uses the word “Surf” in its mark to indicate that it sells surf-inspired products and accessories. As I stated earlier, I have Kate Spade products, and I have purchased Saturdays Surf products, and they are very different.
As for Saturdays Surf’s last argument, that the logos are eerily similar, I don’t think there is much merit to this at all (but maybe that’s because I have too many graphic designer friends in NYC and know a little too much about fonts and typefaces). Both use Sans-Serif typefaces, although the cut for Saturdays Surf is much wider, and the weight of the font (the thickness) is much lighter for Saturdays Surf than for Kate Spade Saturday. In all fairness to Saturdays Surf, both fonts are contemporary and futurist in style. But the differences outweigh this one slight similarity. The color of Kate Spade Saturday’s logo is yellow and black, whereas Saturdays Surf is white and black. Saturdays Surf’s logo has a line detail, whereas Kate Spade Saturday does not.
And probably most obvious, is that Kate Spade Saturday made the explicit announcement that it is “a new line from Kate Spade New York.” The logo even tells consumers who the source is! How convenient for shoppers! Sorry Saturdays Surf, I love your company, but it looks like an appeal would not be very successful in this case.
Images Courtesy of @ks_saturday on Instagram.