If Swatch has its way, the Michael Kors brand won’t get “access” to a trademark it is trying to register. In early February, the watchmaker filed a Notice of Opposition with the Trademark Trial and Appeal Board over the luxury fashion company’s application to register MICHAEL KORS ACCESS for watches and other wearable technology used to track fitness and biometric data. Michael Kors filed an intent-to-use application last April for the mark, and the United States Patent and Trademark Office published it in the Official Gazette in October. Swatch currently has six registered trademarks, including one for SWATCH ACCESS, which was registered in 1999 with a class of goods for watches.
Swatch’s basis for filing the Notice of Opposition was “Priority and likelihood of confusion” under Section 2(d) of the Trademark Act. Swatch states that it has been using its SWATCH marks on watches for more than thirty years and with goods “incorporating enhanced functionalities” since 1996. The Swatch Access watch includes apps for making payments and network access, and many of its more modern watches also have special features. The company believes that its brand would be damaged if Michael Kors were allowed to register the MICHAEL KORS ACCESS mark, stating that it “is and has been engaged in the sale and marketing of goods under its SWATCH ACCESS trademark since a time long prior to the filing date of Applicant’s application for registration.” The Notice goes on to say the registration of the Swatch marks, including SWATCH ACCESS, is prima facie proof of ownership; that is, the existence of the registration is sufficient to establish that Swatch has rightful ownership of the mark, and is entitled to exclusive and priority use. Swatch also argues that it has acquired goodwill with consumers regarding its watches, which is one of the aims of trademark protection, and that consumers have come to associate SWATCH ACCESS with the Swatch Brand. “SWATCH ACCESS and the SWATCH Marks have acquired distinctiveness. Opposer is an innovative company which has associated its marks with a range of goods, including a large assortment of watch products.”
The watchmaker strongly believes that Michael Kors’ mark would be confusingly similar to SWATCH ACCESS because of the similar class of goods, and consumers are likely to believe that Michael Kors’ Access watches originated from, or were authorized or sponsored by Swatch.
Swatch is very active in protecting its trademarks and has sued several other watchmakers over the course of the last year, including LG Electronics and the Acesse Corporation. The Michael Kors brand has until March 13th to file an answer to the Notice of Opposition.
For more information on the trademark application process, please contact The Fried Firm.