Why Urban Outfitters May Have a Hard Time Fighting Coachella’s Suit

In case you missed the memo: Coachella is serious about protecting its name.

Last week, the organizers of the annual music and arts festival held in California filed a suit against Urban Outfitters and its affiliate, Free People, alleging infringement on its wildly popular namesake.

Specifically, the organizers of the Coachella Valley Music and Arts Festival said Urban Outfitters’ attempt to sell several bohemian-themed wares — including a “Coachella Boot,” “Coachella Mini Dress,” “Coachella Pocket Tank” and “Coachella Valley Tunic” — puts it on the hook for trademark infringement, trademark dilution and unfair competition.

The fact that two of youth culture’s most beloved brands are heading to court has garnered significant attention over the last few days, but Coachella’s suit against Urban Outfitters and Free People is not the festival’s first legal rodeo.

According to court documents obtained by Footwear News, in just the past year alone, Coachella has filed at least four other similar suits against companies and individuals for trademark infringement, brand dilution and similar claims.

To the untrained legal eye, Coachella’s legal activity could seem aggressive, but New York–based fashion lawyer Elizabeth Kurpis says the festival’s filings are evidence of a brand doing what is necessary to protect its name.

“What Coachella is doing here is not only typical, but it is their legal duty if they would like to retain the rights to their trademarks,” Kurpis explained. “While the U.S. Patent and Trademark Office will prevent pending applications for similar marks — used on related goods — from being registered based on a likelihood of confusion, it is ultimately up to the trademark owner to take appropriate action when they [suspect that] their mark [is] being infringed upon.”

Kurpis said trademarks are usually enforced first by sending a cease-and-desist letter — which Coachella claims to have done unsuccessfully in its suit — and if there is no response or the parties are not able to come to a mutual agreement, the owner may choose to bring suit, as Coachella did.

Coachella’s trademarks cover most forms of apparel, according to Kurpis, and although some of the items sold by Free People are not specifically listed in Coachella’s registration, “courts tend to find infringement in situations similar to this because apparel items are usually deemed to be in the same channels of trade.”

In others words: “It looks like this will be an uphill battle for [Urban Outfitters and] Free People,” Kurpis said.

And the odds could be stacked even higher in Coachella’s favor when it comes to its trademark-dilution claim.

“The dilution cause of action does not require that the goods be in the same category or channel of trade,” Kurpis explained. “Therefore, should Urban Outfitters and Free People argue that some items they sold are not covered under Coachella’s trademark and as a result there is no infringement, Coachella can circumvent the issue under the dilution claim, so long as they can prove that their trademark arises to the level of being ‘famous.’ ”

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