Facts

Plaintiff Premium Denim, LLC, does business as "Paige Premium Denim" ("PPD") and primarily manufactures and sells premium denim apparel under its trademarks "Paige" and "Paige Premium Denim." PPD was co-founded by Paige Adams-Geller, a fit model and designer, and her husband Michael Geller, an apparel industry executive. Defendant and counterclaimant Ashley Paige Depew is a celebrity fashion designer who operates a studio and retail store in Hollywood, Calif. She designs, markets and sells women's knit swimwear, under her trademarks "Ashley Paige," "Baby Paige," and others.

PPD named its "Paige" trademark after Paige Adams-Geller to capitalize on her notoriety. Ms. Depew objected to PPD's use of the "Paige" and "Paige Premium Denim" marks, claiming they would be confused with "Ashley Paige." At that time Ms. Depew had never filed to register "Ashley Paige" as a trademark and so the "Ashley Paige" mark had not shown up in the trademark search by PPD when it launched its brand. After receiving a cease and desist letter from Ms. Depew, PPD filed an action for declaratory relief seeking to affirm its right to use its mark. Ms. Depew filed counterclaims, including trademark infringement.

PLAINTIFF'S CONTENTIONS:
PPD challenged Ms. Depew's claims as to her dates of first use and the extent to which she had in fact used her claimed marks. PPD also denied that there was consumer confusion based on the limited sales and distribution of the "Ashley Paige" line and other factors.

DEFENDANT'S CONTENTIONS:
Ashley Paige contended that three years after Ashley Paige had begun actively marketing her trademark and trade name in interstate commerce, Premium Denim began distributing and marketing clothing bearing marks such as "Paige," "Paige Denim," "Paige Premium Denim," and other marks containing the name "Paige." Thus, Ashley Paige contended that her use predated PPD's use, that Premium Denim's use of these terms infringed on her trademark, and was likely to create consumer confusion.

Result

To avoid litigation, the parties settled. Ashley Paige received a payment of $825,000 from PPD and its insurer. The parties also agreed to limitations on their respective marks so as to minimize consumer confusion.

Other Information

Prior to the settlement, the court granted a narrow preliminary injunction against PPD which provided that PPD could only sell knit garments under the "Paige" mark if other identifiers were used to distinguish the mark from "Ashley Paige." This limited preliminary injunction was expressly vacated by the court upon settlement. FILING DATE: Aug. 1, 2006.