Kymsta Wins Back Right to Use "Roxywear" Trademark in Appeal of Federal Trademark Case Against Quiksilver

Share Article

Los Angeles women’s clothing manufacturer Kymsta Corp. is happy with the result in the latest round of its longstanding legal battle against Quiksilver, Inc. over the “Roxy” trademark. As a result of a December 30, 2009 appeals court decision, Kymsta has now won back the right to sell clothes under its ROXYWEAR label.

We are happy to get this long legal battle behind us, and focus our energies now on getting our ROXYWEAR back into fashion.

Los Angeles women’s clothing manufacturer Kymsta Corp. today announced that it had won the latest round in its longstanding legal battle against Quiksilver, Inc. over the “Roxy” trademark. In 2008, Kymsta was ordered to phase out all use of its ROXYWEAR trademark after 18 months. As a result of a December 30, 2009 appeals court decision (in Quiksilver, Inc. v. Kymsta Corp., U.S. Court of Appeals for the Ninth Circuit Case No. 08-55861), which recently became final after Quiksilver allowed a 30 day period to challenge the decision to pass, Kymsta has now won back the right to sell clothes under its ROXYWEAR label. Over Quiksilver’s stated fears that any continued use by Kymsta of ROXYWEAR would irreparably harm Quiksilver’s lucrative ROXY brand, Kymsta now has freedom to use the ROXYWEAR mark in the same manner and channels of distribution which it has always used.

Kymsta’s President and head designer, Roxanne Heptner stated: “I am thrilled to win back the right to use ROXYWEAR, which is after all based on my own nickname. Since 1992, ROXYWEAR has become known for trendy, fashionable, high-quality product. I am proud to have protected the goodwill in ROXYWEAR we have developed after so many years. I am even prouder that we stood up against a large corporate behemoth like Quiksilver and winning back our rights.”

Kymsta’s co-owner and Ms. Heptner’s husband, Arthur Pereira, added: “I am quite surprised to see Quiksilver publicly touting in its own press release this latest result as a victory for it. While we certainly hoped for even better, this latest ruling allows Kymsta to put the ROXYWEAR name back into the marketplace – something which Quiksilver’s executives testified at trial and its lawyers argued would seriously damage the ROXY brand and had to be stopped. I don’t see how Quiksilver can be happy about that.”

Kymsta launched ROXYWEAR in 1992, as its flagship line of juniors sportswear. Years later, the line transitioned to contemporary sportswear. ROXYWEAR is named after Kymsta’s head designer, Roxanne Heptner, whose nickname is Roxy. A fashion-forward trendy line, ROXYWEAR clothing has been sold in high-end stores like Barney’s, Sak’s Fifth Avenue, Bloomingdale’s and Fred Segal, as well as retail chains such as Anthropologie and Urban Outfitters.

Quiksilver learned of the ROXYWEAR line many years ago, in or around 1994 or 1995, but never raised any complaint so the parties co-existed in the marketplace for many years. As Mr. Pereira notes, “Quiksilver even had a showroom on the same floor of the same building as us in the late 1990s, yet they still did not complain about our ROXYWEAR name back then.”

In 2002, 10 years after Kymsta launched its ROYXWEAR line and some 7-8 years after Quiksilver first learned of ROYWEAR, Quiksilver finally decided to sue Kymsta in the U.S. District Court for the Central District of California. For almost 8 years since then, the parties have been battling in court, with a trial in 2004, an appeal which Kymsta won in 2006 (in a reported decision from the U.S. Court of Appeals for the Ninth Circuit, Quiksilver, Inc. v. Kymsta Corp., 466 F.3d 749 (9th Cir. 2006)), and then another trial in 2008. (All proceedings at the trial court level, including the 2004 and 2008 trial, were under case name and number, Quiksilver, Inc. v. Kymsta Corp., U.S. District Court for the Central District of California Case No. 2:02-CV-054997.)    

At the end of the 2008 trial, the jury initially delivered a verdict in favor of Kymsta. Over Kymsta’s objections, the jury was ordered to re-deliberate that verdict. After expressing its disappointment at being ordered to re-deliberate what it thought was a “fair verdict,” the jury changed some of its verdict answers against Kymsta but still returned a second verdict finding in favor of Kymsta’s main affirmative defense – i.e., that Kymsta was an “innocent user” of the ROXYWEAR mark.

However, Quiksilver then argued that any continued use by Kymsta of the ROXYWEAR mark would irreparably harm the ROXY brand. For example, Quiksilver argued that Internet marketing has proliferated and Kymsta cannot control how retailers refer to ROXYWEAR when they sell the product on their web sites. Based on such arguments about the tremendous harm that would occur to Quiksilver’s ROXY brand if Kymsta were permitted to continue using its ROXYWEAR mark in any manner, in May 2008, the trial judge (Hon. Valerie Baker Fairbank) ruled against Kymsta on various issues and issued a permanent injunction which required Kymsta to completely stop using the ROXYWEAR mark after an 18-month phase-out period.

Kymsta appealed to the U.S. Court of Appeals for the Ninth Circuit. On December 30, 2009, the appeals court issued its ruling. While it affirmed the judgment against Kymsta, it restored Kymsta’s rights to use the ROXYWEAR name subject to various restrictions, which merely permit Kymsta to use the trademark in the manner and channels of distribution which it has always used since 1992. The appeals court took particular note of: “Kymsta’s innocent adoption of the ROXYWEAR marks, Quiksilver’s delay in bringing suit, the parties’ long period of co-existence in the market, and Quiksilver’s own admission that [a more] limited injunction is sufficient to avoid confusion in the marketplace. . .” The appellate judges then went out of their way to “also note that the ROXYWEAR names allude to Roxanne Heptner, president and part-owner of Kymsta, and we are ‘reluctant to preclude an individual’s business use of his own name when no attempt to confuse the public has been made.’”

Mr. Pereira also stated: “ROXYWEAR has been in the marketplace for most of the past 18 years. We look forward to now exploring options for bringing the strong ROXYWEAR name back to diverse retailers in the clothing marketplace.”

Kymsta’s longtime lawyer, James D. Nguyen, a partner at Wildman, Harrold, Allen & Dixon LLP, commented: “Kymsta is glad the appellate judges saw through all of Quiksilver’s legal arguments and took into account the real factors -- that Kymsta was an innocent user, that ROXYWEAR is based on Roxanne Heptner’s name, and that Quiksilver created any supposed problems in the marketplace by delaying and allowing ROXYWEAR to co-existence with ROXY for many years. This produced a result that was more fair.”

Ms. Heptner concluded: “We are happy to get this long legal battle behind us, and focus our energies now on getting our ROXYWEAR name back into fashion.”

###

Share article on social media or email:

View article via:

Pdf Print

Contact Author

Roxanne Heptner
Kymsta
(213) 380-8071
Email >