College Student/Start-Up Business Owner Sues New Era Cap Co. for Trademark Infringement
On May 22, 2018, God’s Era, a small start-up casual apparel company in Massachusetts, filed a trademark infringement lawsuit against New Era Cap Co. According to the complaint, New Era Cap Co. willfully engaged in trademark infringement, unfairly competed, injured God’s Era business reputation, and New Era Cap Co. used false and deceptive business practices.
God’s Era is a small apparel company that was “wholly self-funded by its owner, Averil Hilton, who is currently a full-time college student and working full-time at another job to support herself.” In the spring 2015, Hilton developed her brand, God’s Era, in order to build a line of apparel that would reflect her Christian faith. Hilton’s line of apparel included t-shirts and sweatshirts for men, women, and children. Hilton designed a “distinctive trademark to reflect that concept of her brand,” which was featured on her t-shirts and sweatshirts. Hilton sold the apparel to friends, family, and members of her church. She also sold to members of the general public at gospel concerts where she ran a merchandise booth. Later, Hilton built a website to sell her products throughout the United States. According to the complaint, because of Hilton’s “exclusive and extensive use and promotion of the God’s Era mark,” Hilton has “developed a reputation and significance among relevant consumers that distinguishes the apparel sold,” and as such, Hilton “owns and exclusively controls all trademark rights of the God’s Era mark.” However, Hilton did not attempt to register the trademark until October 24, 2016.
New Era Cap Co. is “a large multinational corporation perhaps best known among aficionados of baseball caps as the official on-field cap for Major League Baseball.” However, New Era Cap Co. is also known for its extensive line of retail apparel, primarily baseball hats. On March 22, 2017, New Era Cap Co. opposed Hilton’s registration of the God’s Era trademark. New Era Cap Co. claimed that the registration of the God’s Era mark would cause a “likelihood of consumer confusion, mistake, or deception between” Hilton’s mark and various other New Era Cap Co. trademarks. According to the complaint, Hilton informed New Era Cap Co. that the marks were dissimilar, that none of New Era Cap Co.’s marks referenced the word “God,” and the “streetwear, youth culture style of [Hilton’s] apparel is significantly different from the professional uniform style for which [New Era Cap Co.] is known.”
Allegedly three months after New Era Cap Co. learned of Hilton’s attempt to register her mark, in June 2017, New Era Cap Co. began selling apparel under the mark “Fear of God.” According to the complaint, New Era Cap Co. specifically designed the mark to direct consumers away from Hilton’s products and towards New Era Cap Co.’s products. Further, Hilton alleged that New Era Cap Co.’s efforts are part of an overall brand change, which moved New Era Cap Co. “away from its image as a supplier of caps to go with professional baseball uniforms to a style more “street” and similar to the style” reflected in Hilton’s brand.”
In her lawsuit, Hilton’ hopes to receive a permanent injunction preventing New Era Cap Co. from using the mark “Fear of God.” She also hopes to receive damages, including New Era Cap Co.’s profits from the sale of the “Fear of God” products, punitive damages, and attorney’s fees.