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NINTH DECLARES A SURF-OFF IN TRADEMARK BATTLE OVER ROXY LABELS Foley & Lardner’s legal work representing Los Angeles-based women’s clothing manufacturer Kymsta Corp. could have an impact on surfer style. This month, the Foley team won a key part of its appeal from a judge’s ruling during a 2004 trial against Huntington Beach-based Quiksilver Inc. The case, which likely will go on to another trial, involves a trademark battle between Quiksilver’s popular surfer brand, Roxy, and Kymsta’s Roxywear label. “If we win, and show we had prior trademark rights, Quiksilver could have to re-brand their line or lose rights to Roxy,” said James Nguyen, a Foley partner in Los Angeles who represents Kymsta. Nguyen said the case could impact future trademark cases in the apparel industry since many brands work with a dominant “house mark,” or main line, but launch other lines � some keeping the main line’s name attached, and others dropping it completely. In 1992, Kymsta launched a clothing label called Roxywear, named after owner Roxanne Heptner. For years, that brand co-existed with Quiksilver, which had earlier moved into the women’s market with a line originally labeled with both Quiksilver and Roxy. (Whether the court should consider those names on the earliest labels separate or joined has been a major point of contention, according to the appellate opinion.) Then several years ago Quiksilver claimed trademark infringement, and the case went to trial in federal court in Los Angeles. “We don’t dispute that Quiksilver Roxy started first. But the question is, when did Quiksilver drop off the house mark of Quiksilver to be just Roxy,” Nguyen explained. “We believe this didn’t happen until at least the mid-1990s, but, by that time, our client was already in the market with Roxywear.” Kymsta’s appeal hinged on the fact that a jury didn’t get to decide who had the rights to the name: A judge ruled on the case based on the law alone, saying it was so clear that the jury was unnecessary. U.S. District Judge Dickran Tevrizian Jr.’s take was that Quiksilver had the rights to Roxy, Quiksilver Roxy and a couple other variations. But because that company waited so long to file suit, Kymsta could still use existing labels like Roxywear by Roxx and Roxywear by Roxanne Heptner � with some restrictions. In an Oct. 6 ruling, the Ninth Circuit U.S. Court of Appeals sided with Quiksilver and the lower court on some points. But the appeals court found Kymsta introduced evidence that might have defeated Quiksilver’s trademark rights to Roxy, and therefore, the jury should have decided the case � not the judge.

Kellie Schmitt

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