A budding young fragrance company’s aim to celebrate “unconventional beauty and subversive glamour” is proving so compelling that it is earning itself some copycats, including Urban Outfitters. 3-year old Eris asserts in a newly-filed lawsuit that the popular American retail chain not only copied its federally registered trademark for a private label perfume collection, but went so far as to “deliberately” copy-and-paste “marketing text almost verbatim from [Eris’] website” to sell its mass-market scents.
According to Eris’ complaint, which was filed in a New York federal court late last week, since 2017, it has been using the trademark-protected “MX” mark on a “high quality” fragrance created by its founder Barbara Herman and “master perfumer” Antoine Lie. Advertised as “an inclusive fragrance for all genders,” the “MX.” name – pronounced “mix” – is “a play on the mixing process” that Eris used to create the scent, namely the “subtle mixing [of] notes that blur the boundaries between conventional binary ‘his’ and ‘hers’ scents.”
Additionally, the name is “a reference to the gender-free honorific ‘Mx.’” that Eris says “is often used by nonbinary people in lieu of ‘Mr.’ or ‘Ms.’”
The young fragrance company argues that Urban Outfitters and its distributor Maesa co-opted its federally protected “Mx” trademark for use on their own “counterfeit” fragrances, thereby giving rise to claims of trademark infringement. But more than that, the defendants – in an attempt to “deliberately trade on [Eris’] goodwill and pass off their goods” as being connected to Eris, Urban Outfitters and Maesa – “advertised marketing copy taken directly from [Eris’] website and marketing materials.”
To be exact, Eris asserts that Urban Outfitters’ website promotes its “Mx.” “Fresh”, “Skin”, and “Smoke” fragrances with the following language: “Replace Mr., Mrs. and Ms. with Mx. – the X marks the freedom from gender constraints, blurring the boundaries between conventionally masculine + feminine perfume notes.”
Eris’ fragrance (left) & Urban Outfitters’ fragrance (right)
Eris claims that is a bit too close to the wording it uses on its own website: “Named after the gender-neutral title starting to replace Mr., Mrs. and Ms. — the ‘X’ in MX. marks the freedom to be who you want to be, free from the constraints of gender … MX. blurs the boundaries between conventionally masculine and feminine perfume notes.”
Urban Outfitters’ and Maesa’s “conduct is intentionally fraudulent, malicious, willful, and wanton,” Eris argues. By way of their “combined use of [Eris’] trademark and promotional copy,” they are demonstrating “a clear, intentional scheme to unlawfully benefit from willful infringement of [Eris’] intellectual property and unfairly compete” and … a “deliberate intent to create a false impression as to the source and sponsorship of [the Urban Outfitters] products.”
With that in mind, Eris sets forth claims of trademark infringement, unfair competition and false designation of origin, and copyright infringement, and is seeking a court order that the defendants immediately and permanently cease all use of its intellectual property, and an array of monetary damages.
*The case is Eris Parfums v. Maesa, Inc. and Urban Outfitters, Inc., 1:19-cv-02591 (SDNY).
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