Trademark Access Comments on JC Penney Defends Against Aspen Trademark Registration by Going on Offense

JC Penney recently filed a lawsuit against Aspen Licensing International, Inc. in federal court seeking a declaratory judgment that JC Penney does not infringe Aspen Licensing’s trademark registration for ASPEN branded footwear.

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(PRWEB) February 17, 2013

JC Penney recently filed a lawsuit against Aspen Licensing International, Inc. in federal court seeking a declaratory judgment that JC Penney does not infringe Aspen Licensing’s trademark registration for ASPEN branded footwear. Aspen Licensing is a Boynton Beach, Florida-based footwear and clothing licensing company. Aspen Licensing does not manufacture its own products, but rather grant licenses under trademark registrations to other companies that actually make or sell the products.

The lawsuit Case No. 4:2013cv00066 brought by JC Penney in the Eastern District of Texas is for declaratory relief. What that means it that, even though JC Penney is the plaintiff, it is really bringing legal action to defend against Aspen Licensing’s allegations of trademark infringement. According the complaint, Aspen Licensing has been demanding that JC Penney pay money for the sale of footwear under the mark ASPEN, for which Aspen Licensing claims to have a trademark registration. According to the USPTO database, Aspen Licensing actually owns many trademark registrations for the mark “Aspen.” Goods identified in the trademark registrations vary and include curtains, rugs, towels, water coolers, camping gear, jewelry, clothing and footwear. The ASPEN mark has been licensed to such notable retailers as Adidas AG’s Rockport and Marmot Mountain.

The JC Penney lawsuit came about because of the continuing threats from Aspen Licensing regarding infringement of its trademark registration and demanding money. JC Penney recently began selling weather boots, calling the style “Aspen” in certain labeling and packaging. According to court documents, on November 6, 2012, not long after the boots began to hit the shelves, Aspen Licensing sent a cease and desist letter to JC Penney asserting its Aspen trademark registration and alleging trademark infringement. More letters followed, as well as emails and phone calls threatening to sue, and demanding monetary compensation.

So in defense, on February 8, 2013, JC Penney had its trademark attorney file a complaint in Federal Court, seeking a declaratory judgment that its use of the term “aspen” does not infringe Aspen Licensing’s trademark registration. Aspen Licensing has been embroiled in a number of trademark lawsuits in the past, so one would presume it should have seen this coming, said Perry Clegg of Trademark Access One might also wonder if a smaller company like Aspen Licensing can muster the resources to litigate against such a large opponent. However, Aspen Licensing has previously faced similar legal challenges from large entities and successfully defended its trademark registration, Clegg said. Former opponents include the likes of Victoria’s Secret, Columbia Sportswear and Alfred Dunner.

One of the arguments made by JC Penney in the complaint is that “Aspen” is merely a generic word with connotations of winter recreation, and themes of geography and that JC Penney does not use it as a trademark. JC Penney maintains that in regards to its boots, the term “is used only in a generic, geographic manner to reinforce the winter theme of the boots, and is not used in a trademark manner.” JC Penney is hoping that its position will be strengthened by the fact that the actual word “Aspen” is not used anywhere on the actual boot itself. The boot only displays the logo “The Original Arizona Jean Company.” JC Penney owns a trademark registration for “The Original Arizona Jean Company,” which it uses as a name for marketing certain clothing and footwear sold in their stores. The boots in question are among those that carry that trademark. However, some of the packaging and labeling does display the word “Aspen” next to “The Original Arizona Jean Company.”

Interestingly, the complaint filed by JC Penney’s trademark attorney does not seek to invalidate Aspen Licensing’s trademark registration, which according to the complaint has been attempted in the past; rather it merely seeks a judgment that JC Penney has not infringed the Aspen trademark. JC Penney also seeks recovery of its attorney’s fees.


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