Gap, Inc. and Tapestry appear to have resolved a trademark clash that pitted the retail brand owners against one another over Old Navy t-shirts bearing the word COACH. In a filing on May 14, as first reported by TFL, Coach IP Holdings LLC, Coach Services Inc., and Tapestry Inc. alerted a federal court in California that they are dismissing the entirety of their case against San Francisco-headquartered Gap, Inc. without prejudice. The dismissal by Coach and its parent company comes just over a month after they filed suit against Old Navy owner Gap., Inc. for trademark infringement, counterfeiting, and unfair competition.
In the complaint that they lodged with the U.S. District Court for the Central District of California in April, Coach and Tapestry, Inc. (collectively, “Coach”) claimed that Gap, Inc. was running afoul of federal trademark law by way of its “design, manufacture, importation, distribution, advertisement, marketing, offering for sale, and sale of products” that make use of Coach’s well-known name.
“Gap is a competitor of [Coach’s],” the New York-based fashion and leather goods company asserted, and “introduced the accused products into the stream of commerce in an effort to exploit [Coach’s] goodwill and the reputation of the Coach trademarks,” which include the COACH word mark, as well as a stylized version of the mark. Coach alleged that it did not grant Gap, Inc. a license to use its name or any of its other trademarks “in connection with the designing, manufacturing, advertising, promoting, distributing, selling, and/or offering for sale of the [allegedly infringing] products.” Given Gap, Inc.’s marketing and sale of the COACH-bearing Old Navy-branded t-shirts, Coach argued that the products were “likely to create a false impression and deceive consumers, the public, and the trade into believing that there is a connection or association between [them].”
Coach’s allegations were particularly interesting in light of the fact that COACH is both a registered trademark held by the Tapestry-owned brand for use on an array of products, including apparel and leather goods, and a generic term that refers to athletic instructors. We reported at the time that Coach might be in for an uphill battle in its fight against Gap, Inc. due, in part, to the placement of the word COACH on the t-shirt, which appears – at first glance, at least – to be a merely decorative or ornamental feature of the clothing (potentially aimed at coaches), and thus, not meant to act as an indicator of the source of the goods. In other words, the use of the word COACH on the Old Navy shirts does not appear to be aimed at passing off the shirts as Coach products.
The short-lived case was not necessarily a sure-fire win for Gap, Inc., though. As Northeastern University Law professor Alexandra Roberts stated at the time, a few elements could have weighed in Gap, Inc.’s favor. For example, “The rise of collaborations makes it hard to say that just because [the COACH t-shirts] are in Old Navy stores/on its website people will know [that they] are not related to the Coach brand,” she asserted. At the same time, Roberts suggested that the difference between the potential purchasers at play may not be all that extreme, which could weigh in favor of a likelihood of confusion (assuming that there is, in fact, trademark use at play). “I think you’d find a lot of women who buy clothes at Gap/Old Navy and buy handbags from Coach or Kate spade – there is plenty of overlap in those demographics,” she said.
While the terms of any potential settlement between Gap, Inc. and Coach have not been revealed, it is worth noting that the allegedly infringing COACH t-shirts no longer appear on Old Navy’s website.
The case is Tapestry, Inc. et al v. The Gap, Inc. et al., 2:24-cv-02697 (C.D. Cal.)
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