In May 2020, Canadian-based brand Urban Coolab Inc filed to register ‘EMERPUS’ as a trade mark for use in retail services and fashion. However, in January of this year, street wear brand Supreme filed an opposition to the USPTO to block Urban Coolab’s application, arguing ‘EMERPUS’ is simply Supreme spelt backwards, and the Canadian brand was attempting to insinuate an association between their goods and the established Supreme brand.
Supreme claim to have extensive common law rights to their Supreme marks with hundreds of trade mark registrations globally, having used the marks for almost 26 years. They argued they have consistently had exclusive use of the marks in connection to apparel and merchandise, with global sales of their branded goods having grossed hundreds of millions of dollars.
Supreme’s legal representatives, Channel 4, said the ‘Supreme’ word mark, combined with their red and white box logo, is an asset of substantial value to the brand and provides their customers with an assurance of quality goods; They claim that if the USPTO grants the trade mark registration to Urban Coolab, Supreme would not only suffer damage to their reputation as the likeliness of the marks insinuate an endorsement of Urban Coolabs products, but the distinctive quality of their marks would also suffer dilution.
Last month, Urban Coolab issued a statement of defense denying that Supreme would be damaged by the registration of the ‘EMERPUS’ mark as it features little similarity. However, the proposed mark features the word emperus in white block lettering inside a red rectangular box which is arguably very similarly to Supremes logo, also featuring white block letters in a red rectangular box. Regardless, Urban Coolab insists there exists no likelihood of confusion between the marks
Chapter 4 did, however, ask the USPTO to put these proceedings on hold on the 1st of March as they stated ‘the parties are actively engaged in negotiations for the settlement of this matter’. The Trade Mark Trial and Appeal Board granted this delay, suspending the dispute until either party requests to reinstate proceedings.
If you have any questions regarding the above or trade marks in general please do not hesitate to contact the Trademarkroom team today.
-Ellie King
