TOD’S has landed on the receiving end of a new trademark lawsuit, accusing it of co-opting a fellow luxury accessories brand’s logo in furtherance of a “quest [to develop] a logo to boost the TOD’S brand image.” According to the trademark infringement, false designation of origin, and unfair competition complaint that it filed with a New York federal court on April 19, Tribe of Two claims that in 2012, one of its co-founders – Native American model Branda Schad – designed the double-T logo (the “TT Logo”), which it received a U.S. trademark registration for in 2013 for use on “purses and wallets.”
Fast forward to September 2015 and despite its registration for – and consistent use of – the TT logo, Tribe of Two claims that TOD’S debuted a “knock-off” logo in connection with the “Iconic Double-T Collection” that it showed in Milan. Hardly a one-off design, Tribe of Two alleges that since “as early as 1996,” TOD’S chairman Diego Della Valle has been “looking for a logo-based T that could represent TOD’S, much as Louis Vuitton and its LV, or Gucci and its GG.” However, Tribe of Two claims that “until 2015, TOD’S did not have such a logo.”
When TOD’S introduced its allegedly infringing TT logo, Tribe of Two claims that it was “an instant success with the attending editors and press,” and in November 2015, “after its [SS16] runway show and the obvious success of the infringing TT logo, TOD’S applied to register the logo in the United States for footwear and handbags in addition to over 165 different goods in classes 6, 9, 14, 18, and 25.” (Tribe of Two says that it lodged oppositions to TOD’S applications.) And beginning in March 2016, “and intensifying through 2017 and 2018,” the Italian fashion brand “launched an intensive marketing campaign intended to create instant brand recognition worldwide for its Iconic Double-T Collection, which prominently depicted the infringing TT logo.”
“Despite TOD’S intention to make the infringing TT logo synonymous with its brand, TOD’S either ignored its duty to conduct a trademark search or conducted a trademark search and knew Tribe of Two had superior rights in the TT Logo,” per Tribe of Two.
To make matters worse, the plaintiff claims that behind the scenes, it had reached out to influencer and designer Chiara Ferragni, who was also a “close collaborator” of TOD’S, in July 2015, seeking her promotion of its Tribe of Two handbags. “The communication prominently featured the TT Logo and a link to Tribe of Two’s website.” Tribe of Two claims that while it not hear back from Ferragni, who is not named as a defendant in the lawsuit, TOD’S collaborated with her in 2017 for a #ChiaralovesTod’s collection that featured the allegedly infringing TT logo. In 2017, Ferragni had ten million Instagram followers, Tribe of Two claims, which helped the Iconic Double-T collection to “flood the market,” thereby, “ensur[ing] success for [TOD’S] and the death of a small business brand.”
At the same time, Tribe of Two maintains that TOD’S undertook “a massive promotional campaign for its Iconic Double-T Collection, gifting shoes and handbags bearing the infringing TT logo to models, including Gigi Hadid, Kendall Jenner, Alessandra Ambrosio, [and] Bella Hadid,” among others, and celebrities like Uma Thurman, Cate Blanchett, Blake Lively, Naomi Watts, and Margot Robbie.
With the foregoing in mind, Tribe of Two claims that TOD’S actions have “caused consumers to believe that Tribe of Two’s TT Logo is owned by TOD’S, depriving [it] of the ability to establish and grow its brand, or accrue significant goodwill with the public.” In what seems to be a reverse confusion claim in the making, Tribe of Two contends that once TOD’S allegedly infringing TT logo “had saturated the market,” it was “unable to sell its bags and accessories.” All the while, Tribe of Two argues that TOD’S “was aware of [its brand] and the TT Logo, and willfully elected to take advantage of Tribe of Two’s lesser resources to compete with the fashion giant, by wantonly ignoring Tribe of Two’s presence, using its brand image, and egregiously attempting to run Tribe of Two out of business.”
Setting out claims of trademark infringement, false designation of origin, and unfair competition, Tribe of Two is seeking injunctive relief to bar TOD’S from “advertising, marketing, promoting, offering for sale, distributing, or selling any infringing TT Logo products,” among other things, monetary damages, and an order from the court indicating that TOD’S pending trademark applications for the allegedly infringing logo be rejected.
One final note: In a particularly spot-on allegation in the complaint, Tribe of Two asserts that, “Unique logos become synonymous with their owners in the eyes of the public, making a distinctive and memorable logo a highly valuable asset. Fashion houses rely on their names and brand recognition to drive revenue and their logos are regarded as more important than the product itself.” (For a deeper dive into what luxury brands are actually selling, you can find that right here.)
A rep for TOD’S did not immediately respond to a request for comment.
The case is Tribe of Two, LLC v. Tods, S.p.A., Ltd., 1:23-cv-03255 (SDNY).
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