Overly Aggressive Lawyering May Cost Fashion Institute its Trademark

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By arguing that its "F.I.T." trademark for clothing is confusingly similar with the trademark application for "NYFIT," the attorneys for the Fashion Institute of Technology may cause F.I.T.'s own mark to be lost.

Sometimes, having overly aggressive attorneys can backfire. The "Fashion Institute of Technology" is a small community college speciallizing in courses related to fashion design located in New York City. It goes by the initials "F.I.T.," and, like most colleges, sells t-shirts emblazoned with its initials. In 1999, F.I.T. registered its "FIT" acronym as a trademark for clothing. Because the trademark is pronounced "eff eye tea," it was allowed to be registered even though there are dozens of other registered trademarks for clothing that contain the word "fit."

Last month, however, F.I.T.'s attorneys filed an opposition in the Trademark Office (Opposition No. 91166257) seeking to stop registration of another trademark containing the word "fit," namely "NyFit," pronounced "nye fit," as in "nylon-spandex fitness clothing." In the opposition papers, F.I.T.'s attorneys claimed that because the NyFit mark contained the word "fit", it is confusingly similar with F.I.T.'s registration for "FIT."

The move by F.I.T.'s attorneys, however, has backfired. In responding to the opposition, the applicant for the NyFit trademark, Frank Weyer, who happens to be a trademark attorney, pointed out that if F.I.T.'s "FIT" mark is to be read to cover the word "fit", then it is confusingly similar with dozens of other trademarks for clothing that contain the word "fit" for clothing, meaning that F.I.T.'s trademark registration is itself invalid. Mr. Weyer counterclaimed, seeking cancellation of F.I.T.'s "FIT" trademark. As a result, not only will F.I.T.'s attorneys likely fail to stop registration of the "NyFit" trademark, they may cause F.I.T. to lose its own trademark as well.

The old addage is true: lawyers who have clients that live in glass houses should be careful who they throw stones at.


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Frank Weyer
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