Patagonia’s “Worn Wear” initiative – which enables consumers to trade in, repair, and buy used Patagonia clothing and gear – has become one of the symbols of the company’s commitment to environmental responsibility. And as demands for more sustainable approaches to apparel continue to come to the fore, the retailer’s efforts to protect this sub-brand have been quietly playing out before trademark bodies in the U.S., with Patagonia taking on other eco-centric companies to ensure exclusivity of the valuable “Worn Wear” trademark – and prevent other uses that it claims are “confusingly similar.”
Over the past couple of years, Patagonia seems to have escalated its enforcement efforts with regard to its WORN WEAR trademark by way of opposition and cancellation proceedings before the U.S. Patent and Trademark Office (“USPTO”) and its Trademark Trial and Appeal Board (“TTAB”). It has argued, among other things, that consumers have come to associate the WORN WEAR name with it, and have come to expect a certain level of product quality and a dedication to sustainability that it is known for.
Against that background, an enduring clash between Patagonia and Worn Again Technologies stands out. In a string of filings, Patagonia argues that the name of the unaffiliated textile recycling company, which boasts partnerships with H&M and Gucci-owner Kering, is likely to confuse consumers when used in connection with apparel and related goods/services. And as a result, Patagonia has sought to block applications for registration for Worn Again Technologies’ marks, which it argues are likely to confuse consumers and could “undermine the distinctive character of [the] Worn Wear [brand] in consumers’ minds.”
Patagonia vs. Worn Again Technologies
The complex clash between Patagonia and Worn Again Technologies got its start in October 2023 when the California-headquartered outdoor-wear brand waged an opposition, in furtherance of which it has sought to block the registration of Worn Again Technologies’ applications for registration for the “Worn Again” and “Worn Again Technologies” word marks for use on “chemicals for use in industry,” clothing, and the treatment of materials in the nature of clothing, footwear, headgear, etc.
According to Patagonia, “for more than a decade,” it has used the WORN WEAR trademark for “retail services, repair and trade-in programs, durability, repairability, reusability and repurposing of clothing and gear, as the brand of individual apparel products (and other related goods), and online content related to clothing recycling and repair processes and customer experiences.” Yet, Patagonia asserts that “well after [its] WORN WEAR marks gained notoriety and a reputation as symbols of high-quality goods and services worldwide,” Worn Again Technologies filed applications for registration for its “Worn Again” marks with the USPTO.
In light of its rights in (and registrations for) the WORN WEAR marks, Patagonia claims that any registrations granted to Worn Again Technologies “will interfere with [its] exclusive rights to use its WORN WEAR mark and will cause damage to Patagonia.” Specifically, the company argues that Worn Again Technologies’ use of the WORN AGAIN marks “so resemble” Patagonia’s WORN WEAR marks that they are likely to cause consumer confusion “when used in connection with clothing, chemicals, treatment and/or alteration of clothing and textiles for recycling, and the provision of information related to recycling and upcycling services.”
In its defense, Worn Again Technologies has argued that there is no likelihood of confusion, as the trademarks at issue “create different commercial impressions, and the parties’ respective goods and services are not similar or related.” At the same time, Worn Again Technologies, in a further attempt to chip away at the strength of Patagonia’s opposition, claims that Patagonia’s WORN WEAR marks are “merely descriptive of the goods and services recited in [its] applications.”
Worn Again Technologies vs. Patagonia
More recently, Worn Again Technologies has been on the plaintiff side of the equation. By way of two opposition proceedings of its own, it is angling to block the registration of three of Patagonia’s trademarks: The WORN WEAR word mark and a logo that consists of “a circle enclosing the stylized image of a jacket” along with the words WORN WEAR for use on bags and clothing, as well as the WORN WEAR word mark for use on “sewing awl” and clothing repair kits. (It is worth noting that Patagonia relies on these trademarks – and cites the three pending applications for registration that Worn Again is looking to block – in its opposition against Worn Again.)
In those proceedings, which it waged in July and September 2024, Worn Again Technologies maintains that it has used the WORN AGAIN trademark in connection with clothing, footwear, and carry-all bags in U.S. commerce since as early as 2006. As a result, it contends that the WORN AGAIN mark “has become associated in the minds of the relevant consuming public with Worn Again and continues to be understood as a reference to Worn Again and its goods and services.”
Interestingly enough, in its bid to block registration of Patagonia’s marks, Worn Again argues that its marks and Patagonia’s are “similar in sight, sound, meaning and commercial impression.” This argument is interesting because it appears to directly contradict Worn Again’s defensive claims in the Patagonia-initiated opposition proceeding, in which it argues that there is no likelihood of confusion since the two companies’ marks “create different commercial impressions.”
With regard to Patagonia’s applications for registration for the Worn Wear marks for use on clothing and/or repairing products/services, Worn Again argues that these goods/services are “closely related to clothing offered under Worn Again’s marks.” Moreover, Patagonia’s goods “share a high degree of relatedness with clothing and other materials treatment services, clothing and other materials recycling services, clothing and other materials upcycling services, alteration of clothing and other materials, and corresponding advisory, consulting and informational services offered under Worn Again’s marks,” the company contends.
As of the time of publication, all three of the opposition proceedings have been suspended as the parties consider alternative dispute resolutions, with Patagonia stating that it is focused on finding ways to “prevent consumer confusion while preserving the integrity of the Worn Wear trademark.”
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