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The maker of a wildly successful line of clothing, marketed mainly through the use of musicians and athletes to teen-agers and young men, won a $6.7 million verdict for trademark infringement against a competitor last week. Southern District of New York Judge Denise Cote, who conducted a two-day bench trial on July 1 and 2, ruled in 75-page decision that GTFM Inc. is entitled to damages because its competitor, Solid Clothing Inc., had infringed on its “05″ marking on a line of baseball and football jerseys as well as other apparel GTFM manufactures under the popular “FUBU” name. On many lines of clothing made by both companies, the placement and style of the “05″ numbering was designed to mimic the numbers worn by professional athletes on their uniforms, according to Cote’s opinion in GTFM Inc. v. Solid Clothing Inc., 01-2629. Because there is nothing inherently distinctive in use of the marking “05,” Cote wrote, the case boiled down to a question of whether the marking had acquired a distinctive recognition in the marketplace that allowed consumers to identify the product. While the mark “05″ was not distinctive, because it merely looks like a number worn by a professional athlete, Cote concluded that the mark had acquired “secondary” distinctiveness because of the way it had been marketed and the press attention it had gathered. PUBLIC EXPOSURE Though GTFM had spent relatively little to advertise its “05″ mark, Cote noted, the company had achieved “widespread public exposure” for the mark through its affiliation with “prominent celebrities.” The recording artist and actor LL Cool J has worn “05″ garments in public appearances, and heavyweight boxing champion Lennox Lewis has consistently worn GTFM clothing, she noted. The company has attracted “widespread, unsolicited media coverage” on popular television news shows, such as ABC’s “World News Tonight,” CNN’s “Business Unusual” and in major newspapers, said Judge Cote. The company was able to garner that coverage, she explained, because of the “compelling story” of how five inner-city black entrepreneurs built their own company against “enormous odds.” Cote described how one of the company’s founders, Daymond John, had mortgaged his mother’s home in 1993 in order to cover $60,000 in orders. By last year, its annual revenues from sales worldwide had climbed to $350 million. The “FUBU” logo which appears on much of the company’s clothing stands for “For Us By US,” and is emblematic of the young company’s aim to design and market its products to young black men, who could identify with the owners, Cote suggested. Cote also awarded GTFM attorney fees, finding that Solid Clothing had acted in bad faith. A fee award was warranted, she said, because of Solid Clothing’s conduct during the trial, including “its perjury during deposition and trial.” GTFM was represented by Louis S. Ederer, John Maltby and Joseph P. Tucker of Gursky & Ederer. Solid Clothing was represented by Mark L. Sutton, John Park and Benjamin Jesudasson, all from Los Angeles.

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