Interestingly, in making a claim of fraud, Third Estate does not set forth any counterclaims of its own, such as one seeking to have Chrome Hearts’ allegedly fraudulently-procured trademark registration cancelled.
#MNML SIMILAR BRANDS MANUAL#
Instead, Third Estate seems to suggest that Chrome Hearts has engaged in fraud by using its mark beyondwhat the initial specimen showed, which is interesting, as the USPTO does not require that specimens submitted with an application for registration must depict alluses of a the mark in connection with the goods/services at issue.Īfter all, the USPTO’s manual requires that “the specimen show the mark as used on or in connection with the goods in commerce,” and does not call for a showing of all uses in connection with the goods in commerce. It seems that fraud would come into play not if Chrome Hearts was not actually using a cross-adorned hang tag, such as the one that it submitted to the USPTO, in connection with its garments, which Third Estate does not explicitly claim. The trademark office further states in its manual that “the specimen must show the mark as used on or in connection with the goods in commerce,” which is presumably what the hang tag that Chrome Hearts uses and submitted with its application shows. The USPTO states in its manual that “in most cases, if a trademark is ordinarily applied to the goods or the containers for the goods by means of labels, a label” – or a “tag, or container for the goods, or a display associated with the goods” – is “an acceptable specimen,” thereby, suggesting that Chrome Hearts’ submission of a hang tag that depicts the cross mark is, in fact, a sufficient specimen. In terms of whether Chrome Hearts’ submission of a specimen (i.e., a required sample that shows how the trademark for which a party is seeking a registration is used in commerce) in the form of a hangtag, as opposed to one that depicts the use of the mark on denim or another garment, actually amounts to fraud on behalf of Chrome Hearts, that seems at least somewhat unlikely.Īs the USPTO states in its Trademark Manual of Examining Procedure, “A specimen must show the mark as used on or in connection with the goods in commerce.” For the trademark at issue, the goods, according to Chrome Hearts’ trademark registration, are “Clothing, namely, tee shirts, shirts, tank tops, sweat shirts, sweat pants, vests, sweaters, jeans, pants, chaps, dresses, skirts, jackets, coats, underwear, swimwear, hats, socks and footwear.” MNML’s jeans (left) & Chrome Hearts’ jeans (right) Such a discrepancy gives rise to fraud, according to counsel for Third Estate. To be exact, Third Estate alleges that Chrome Hearts “procured its trademark registration with the intent to deceive the USPTO,” as the specimen it submitted in connection with its 2013 application “consist of hangtags, and not of ornamental designs on jeans, as is alleged in the complaint.”
According to the fast fashion streetwear brand, Chrome Hearts’ mark is “invalid and unenforceable due to improper and fraudulent and inequitable conduct before the U.S. Still yet, Third Estate claims that Chrome Hearts’ trademark-specific problems are even more fundamental than that. More than that, Third Estate argues that even if Chrome Hearts’ Celtic cross-inspired mark is capable of indicating a single source of products (and thus, serves as a trademark), those rights lapsed when Chrome Hearts “abandoned” them as a result of its “failure to police, failure to use the alleged mark on a consistent and continuous basis, and through acts of omission or commission that have cause the claimed mark to lose its significance as an alleged trademark.” Specifically, counsel for Third Estate argues that Chrome Hearts “has no protectable trademark rights” in the cross symbol for a number of reasons, including the (alleged) fact that the cross mark is “ornamental, consists of a generic design used by the public at large in ornamental fashion, and fails to function as a trademark.” MNML has responded to the lawsuit that Chrome Hearts filed against it for allegedly adorning its jeans with one of Chrome Hearts’ “most iconic and well recognized trademarks” in an effort to confuse consumers as to the source of its allegedly infringing wares. In the answer that filed it in a federal court in California last week, MNML – or better yet, MNML’s corporate entity, Third Estate LLC – “denies that it engaged in any wrongful conduct,” and sets out a host of affirmative defenses, including one in which it accuses Chrome Hearts of engaging in fraud.Īccording to the newly-filed answer, Third Estate asserts that Chrome Hearts – which set forth claims of trademark infringement and unfair competition in its April 2020 lawsuit – has failed to state claims upon which relief can be granted and thus, “denies that is entitled to the requested relief or any relief” at all.
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