Vans won a long and hard-fought battle over usage of the trademark for its Old Skool line of shoes in August when the U.S. Patent and Trademark Office ruled that the clothing company called Branded LLC could no longer lay claim to its mark Old School due to “nonuse with no intent to resume use.”
The VF-owned label first filed the challenge in 2017 after being denied a trademark for a similar design.
The win in the Trademark Trials and Appeals Board (TTAB) is part of a busy 2022 in litigation for the California-based shoemaker.
In March, Vans won an injunction against Walmart for copying a number of its shoe brands, only to be back in court in October complaining the mega merchant, which has also run afoul of Kanye West’s Yeezy brand, wasn’t following the court’s orders. In May, Vans won another injunction against subversive art collective MSCHF for its satirical take on Vans’ most iconic footwear style.
Vans has been making its Old Skool skating shoes since 1977, but Branded obtained the Old School trademark in 2008 for its jackets and hats through its purchase of Harold’s Stores bankruptcy liquidation, according to the USPTO’s ruling. Branded CEO Keith Johnston has 42 years of experience in fashion and owns more than 50 clothing brands, but does not manufacture clothing himself, rather he outsources that to other agencies.
In 2008, Johnston saw Old School as a “valuable and under leveraged” brand, official documents say, and he partnered with Scott Kuhlman, who was still owed money by Harold’s even after the bankruptcy. To recoup, Kuhlman asked Johnston if he could sell existing Old School products and Johnston agreed.
Kuhlman said he continued to sell Old School products at retail outlets through 2016. He testified that he continued to produce “hundreds, if not thousands, in total of everything you have listed” plus socks, neckties and many other categories of apparel through 2018.
Unfortunately for the Branded case, Kuhlman could not produce any records of these sales, nor could he produce any proof of advertising for the products.
Section 45 of the U.S. Trademark Act declares that a mark will be determined to be abandoned “When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. ‘Use’ of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.”
At trial, Branded was able to provide a website for the Old School Clothing Company, but it was only an informational site, not one meant for conducting commerce.
Vans hired private investigator Ines Klinesmith from Bishop IP Investigations Limited to search for any use of the Old School trademark anywhere. Klinesmith testified that she “found no references anywhere to the subject marks being used in connection with clothing or physical stores within the five years preceding the completion of our investigation in 2017.”
Klinesmith went on to testify that she found “no evidence to suggest that Kuhlman Company or Hampshire Group has ever marketed or distributed the Old School brand.”
Ultimately this was enough for the TTAB to rule in favor of Vans.
“Johnston waits for the deal that will make him [sic] rich man, but the Trademark Act does not provide a warehouse for unused marks,” the TTAB wrote in its decision. “We grant the petitions for cancellation on the sole ground of abandonment.”
No word yet on whether Vans plans to acquire the Old School trademark now that it has been abandoned.
