1:23-cv-01644
S.D.N.Y.Jan 9, 2024Background
- Global Brand Holdings, LLC (GBH) owns registered trademarks incorporating "XOXO" for goods like bedding and accessories, and asserts the marks are distinctive and source-identifying due to marketing efforts.
- Rae Dunn Design LLC and Enchante Accessories Inc. allegedly sold blankets and towels bearing “XOXO,” prompting GBH to file suit for trademark infringement after a cease-and-desist letter was ignored.
- The allegedly infringing goods were sold at major retailers and online (e.g., T.J. Maxx, Amazon).
- The suit raises whether Defendants' use of "XOXO" is protected as fair use under trademark law, specifically as a non-trademark, descriptive use made in good faith.
- Defendants moved to dismiss under Rule 12, arguing their use of "XOXO" is fair use, while GBH asserts this is a factual question inappropriate for dismissal at this stage.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Defendants’ use of “XOXO” is as a trademark or a fair use | Use is as a mark identifying source, creating likelihood of confusion. | "XOXO" is used decoratively, and Rae Dunn's branding appears prominently; qualifies as fair use. | Not clear from complaint that use is "other than as a mark"; motion to dismiss denied. |
| Appropriateness of resolving fair use on a Rule 12 motion | Fair use is fact-intensive and not suitable for dismissal at this stage. | Facts in complaint show fair use as matter of law, permitting dismissal now. | Fair use defense not evident on face of complaint; factual issue precludes dismissal. |
| Effect of Rae Dunn branding on products on “as a mark” analysis | Display of XOXO mark still functions as source-identifying despite other branding. | Rae Dunn name on product means “XOXO” is not being used as a mark. | Prominent display of another mark is one factor; fact-intensive analysis needed. |
| Ornamental/decorative v. source-identifying use | "XOXO" has acquired secondary meaning and is source-identifying. | "XOXO" used decoratively or ornamentally, not as a mark. | Distinctiveness is plausibly alleged; issue not proper for resolution at this stage. |
Key Cases Cited
- Tiffany & Co. v. Costco Wholesale Corp., 971 F.3d 74 (2d Cir. 2020) (sets out fair use test for trademark infringement)
- Ashcroft v. Iqbal, 556 U.S. 662 (2009) (pleading standard for motions to dismiss, requiring plausibility)
- Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) (sets out federal pleading standards for complaints)