Designers Defending Their Names

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If you are interested enough in fashion to be visiting this page, I cannot tell you anything new about Roy Halston Frowick, better known as Halston. He was unique in many ways, starting with the fact that he launched his career with a single piece: the pillbox hat that Jacqueline Kennedy wore to John F. Kennedy’s inauguration as president, in 1961. (The fact that Mrs. Kennedy was also wore a Halston pillbox while sitting in the car next to the president as he was assassinated, in Dallas, led to the style going out of fashion in the blink of an eye.) By 1983, Halston’s company, Halston Limited, was owned by Norton Simon, Inc. Unless Halston had agreed to all that at some point, the likely explanation was that there had been no form of what lawyers call a non-assignment clause in place in the relationship that Halston, the man, had set up with the owners of Halston, the brand. In any event, within about one year, Halston was no longer designing for Halston Limited. He died in 1990, a man without his own name in design. Once that disassociation occurred, Halston, the brand, which still exists, has a life of its own, and it has since changed hands seven times more.

Catherine Malandrino recently filed a lawsuit against Elie Tahari and others, claiming she was wrongfully deprived of rights under a deal by which she sold her brand (and, for all intents and purposes, her professional name) to a company controlled in part by Tahari, which employed her as its creative director. Malandrino had only minority representation on her new employer’s management committee. She alleges that her co-venturers and others routed around her in subsequent dealings, damaging the brand and failing to compensate her as agreed. Although the complaint is passionately composed, it does not directly address what appears to be the underlying issue: Malandrino and her representatives did not provide, in the agreements she signed, the kind of contractual protections that could have reduced or eliminated many of the alleged wrongs and that would have given her final say as to what was and was not a Catherine Malandrino creation.

On a happier note there is the long, circular tale of Joseph Abboud. His eponymous menswear line debuted in 1987. His name was registered as part of trademarks that he licensed to a joint venture in which he took an interest through a corporation he owned. He then sold off his equity interest and worked as a consultant to the company that now exclusively owned his name in the fashion business—until creative differences caused an abrupt. Abboud tried to start a new brand called “jaz,” making it known in the trade that he was the designer. In the lawsuit filed by the company that owned the Joseph Abboud trademarks, the court ruled, “Abboud is permanently enjoined and restricted from using her personal name to sell, market, or otherwise promote, goods, products, and services to the consuming public.” In all, a humiliating result for one of my favorite menswear designers. Several sales of branding rights and changes in price point later, man and brand were effectively reunited; in 2014, Abboud became chief creative director at Men’s Wearhouse, which is the current owner of the Joseph Abboud brand and trademarks.

And we must not forget that there are many success stories. Karl Lagerfeld is still a walking brand, regardless of whatever house for which he has already has served or may yet serve as designer. Ralph Lauren’s name is owned by his company, which is public and so owned by many shareholders—but he has set up everything quite nicely and is surely not losing sleep worrying about whether he will still be designing under his own name.

The message: every good designer is either a good business person or should work in close company with someone else who is just that—and every good business person watching over a designer’s name should have a lawyer nearby who knows what to do to keep the designer and his name permanently in each other’s company.

Next: we will show a bit of how that works.

Credit:  Alan Behr

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What Chanel and Kleenex Have In Common

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When Chanel filled the back cover of WWD with an advertisement that was nothing more than black words on newsprint—without a perfume bottle, a skirt suit or even Karl Lagerfeld anywhere in sight—you knew that the topic was serious. The ad was an open letter directed to “fashion editors, advertisers, copywriters and other well-intentioned mis-users of our Chanel name.” It reminded them that CHANEL stands for the designer Coco Chanel, the signature perfume and the company’s other products, and that, “CHANEL is our registered trademark…”

And right they are. There are major brands that are virtually nothing other than trademarks. Run as design studios, they own no factories, and at least under US law, often have little hope of securing legal protection for the exclusive rights to their most successful designs. The good will, which for them is the core of enterprise value, is in the trademarks that identify the source of the products marketed under their brands and by which the public and trade recognize their goods.

The easiest way to dilute or otherwise damage a mark is for the owner and others to misuse it. That is why Chanel insists that a jacket not be called “a CHANEL jacket” unless Chanel makes it. Another easy way to lose a mark for goods is for it to become a generic term, which can start to happen when it is misused as a verb when applied to the goods of others, as in (to use Chanel’s hated examples), “Chanel-ed” and “Chanel’ized.” The ad closes the way you would expect by a piece that, by necessity, is a mild scold—by blaming the lawyers.

Kleenex-Tissue-BoxChanel is right, and even its lawyers are right. So are the lawyers for Xerox, who have been after writers for decades to knock off saying, “Go xerox it” or, just as bad, calling a rival maker’s photocopier a “Xerox machine.” They would rather that you say instead, “Go make a photocopy on the Xerox machine” or, even better, “let’s trade in that clunker of a photocopier for an authentic Xerox brand device.” As that example shows, the price of popularity of a trademark is that it comes to symbolize not merely a single source but an entire product category, which could cause the owner actually to lose exclusive rights to the mark. Other beneficiaries of this happy dilemma are KLEENEX, for facial tissues, and, in the UK, HOOVER, where it is often misused as a verb for operating any vacuum cleaner, as in, “Get your bum off the sofa; I’m going to hoover the floor now.”

Should any trademark for your fashion brand become so well known that it brings to mind an entire product category, you should consider doing what Chanel has done—get the word out that your trademark belongs to you alone and that it identifies you as the exclusive source of your products. To help achieve that goal in day-to-day usage, always use your trademark as a proper adjective, as in, “For my birthday, honey, I’d just love a little trinket, nothing more—say, a Chanel watch.” Your mark should never to be used as a (lower case) noun as in, “I had such a chanel moment today,” (when being admired while walking the dog in a Nike tracksuit). And it must never be used as a verb, as in, “Go chanel your look with a counterfeit Gucci purse.” (The two wrongs in that sentence do not make a right.)

Trademarks last as long as they are used and protected. Use yours well.

Credit:  Alan Behr