In the latest of a series of trade mark-related complaints to be brought against bargain shoe store Payless, a US court has granted clothing store American Eagle Outfitters' request for a preliminary injunction barring the store's use of the American Eagle logo on footwear and bags
The ruling requires Payless to adopt the following disclaimer: "AMERICAN EAGLE OUTFITTERS shoes and bags are available only at AMERICAN EAGLE OUTFITTERS stores and on its website www.ae.com."
American Eagle Outfitters (AEO), a casual clothing store targeted to 15 to 25 year-olds, claimed that Payless was "deceiving consumers" by selling merchandise under the brand name American Eagle, which it marketed as a "youth fashion brand".
In 2006, Collective Brands, the holding company of Payless ShoeSource, Stride Rite and Collective Licensing International, acquired a footwear brand called American Eagle from Jimlar Corporation.
AEO said that Jimlar's American Eagle brand had not caused confusion in the 20 years prior to its sale to Collective Brands, but that Payless chose to market the merchandise in a confusingly similar way to AEO.
"Payless jettisoned everything associated with the Jimlar brand and adopted a marketing campaign that clearly evoked AEO," said Lisa Pearson of Kilpatrick Stockton, who is representing AEO in the case.
In a press release, AEO said: "Payless is marketing AMERICAN EAGLE shoes and accessories with advertising and promotional materials that copy the look and feel of AEO's distinctive marketing style and falsely claiming to be the exclusive source of AMERICAN EAGLE and AE 'women's,' 'men's' and 'accessories,' which continues to cause consumer confusion as to the relationship between Payless and AEO."
The suit was filed in the Eastern District of New York in April 2007 and includes claims of false advertising, unfair competition and breach of contract.
Payless has not yet filed its response to the complaint, but Pearson said that the company contends that there is no restriction on its use of the American Eagle trade mark.
In June, Collective Brands agreed to pay athletic footwear maker K-Swiss $30 million following claims that Payless infringed K-Swiss's five-stripe logo.
One month earlier, a jury in Oregon ordered Payless to pay $304 million to adidas for infringing its famed three-stripe mark, an amount believed to be the largest jury award for trade mark infringement in US history.
"We're pleased with the court's decision to issue a preliminary injunction against Payless," said Neil Bulman, vice president and general counsel of American Eagle in a statement. "Our ultimate goal is to stop Payless from misleading and confusing consumers and to protect the integrity of our brand," he said.
