## Facts

- Joseph Abboud, a menswear designer, and his company Houndstooth Corp. sold a menswear business and related intellectual property to JA Apparel Corp. for $65.5 million under a 2000 purchase agreement.
- The sale included the “Joseph Abboud” trademarks, related marks, and associated goodwill tied to the menswear business.
- A side letter required Abboud to provide consulting and promotional services for five years as “Chairman Emeritus.”
- After the noncompetition period ended, Abboud developed a competing clothing line branded “jaz.”
- Abboud proposed advertising for “jaz” that referenced him by name (e.g., “a new collection designed by Joseph Abboud”).
- JA Apparel asserted that these uses infringed and diluted its rights in the “Joseph Abboud” marks and breached the 2000 agreement; Abboud contended he sold his name only as a trademark and retained the ability to refer to himself descriptively.
- After an earlier bench-trial ruling largely favoring JA Apparel, the Second Circuit held the contract ambiguous and remanded for extrinsic-evidence review and a refined Lanham Act fair-use analysis.
- On remand, the district court addressed contract scope, trademark fair use, and the proper form of permanent injunctive relief.

## Issues

1. Whether the 2000 purchase agreement and side letter transferred to JA Apparel the exclusive right to use “Joseph Abboud” for all commercial purposes, barring Abboud from descriptive uses of his personal name in connection with a new line.
2. Whether Abboud’s proposed “jaz” advertisements that mention “Joseph Abboud” qualify as descriptive fair use under the Lanham Act or instead function as trademark use likely to cause confusion.

## Decision

- The court held that the agreements did not convey to JA Apparel an exclusive right to use Abboud’s name for all commercial purposes; the transfer was directed to trademark rights and the sold menswear business.
- The court held that some proposed references to “Joseph Abboud” in “jaz” advertising were permissible descriptive fair use when used in complete descriptive phrases, not as a mark, with “jaz” clearly presented as the brand.
- The court held that other proposed uses did not qualify as fair use where “Joseph Abboud” was displayed or positioned in a manner that operated as a source identifier and increased the likelihood of confusion.
- The court entered a permanent injunction that:
  - barred Abboud from using “Joseph Abboud” as a trademark, trade name, service mark, or brand name;
  - barred use of “Joseph Abboud” on “jaz” clothing, labels, hang-tags, or packaging;
  - restricted use in ads to descriptive sentence-style references, no larger or more distinct than surrounding words, with prominent display of the “jaz” mark (or another trademark); and
  - required disclaimers for specified ads to reduce confusion and clarify non-affiliation with JA Apparel.

## Legal Principles

- A contract transferring a personal-name trademark is construed based on the agreement’s language, context, and (if ambiguous) extrinsic evidence; courts do not infer a transfer of all commercial uses of a personal name absent clear, explicit terms.
- A personal name can serve both as a trademark (source identifier) and as a descriptive reference to an individual; transfer of trademark rights does not automatically eliminate all descriptive, non-trademark uses by the individual.
- Lanham Act descriptive fair use permits use of another’s mark when the term is used descriptively, otherwise than as a mark, and in good faith.
- In assessing fair use for advertising, courts consider typography, prominence, placement, and overall presentation to determine whether the disputed term functions as a brand or merely describes the designer.
- Equitable relief in trademark disputes should be narrowly tailored to prevent confusion while allowing lawful descriptive speech, including use of prominence requirements and disclaimers.

## Conclusion

The court rejected a reading of the sale documents that would bar all commercial references to Joseph Abboud’s personal name, but it limited his ability to use “Joseph Abboud” in “jaz” marketing to genuine descriptive, non-brand use and imposed a detailed injunction to prevent consumer confusion and protect JA Apparel’s trademark rights.


JA Apparel Corp. v. Abboud, 682 F. Supp. 2d 294 (S.D.N.Y. 2010)