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International Star Class Yacht Racing Association v. Tommy Hilfiger, U.S.A., Inc.

80 F.3d 749 (1996)

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International Star Class Yacht Racing Association v. Tommy Hilfiger, U.S.A., Inc.

United States Court of Appeals for the Second Circuit

80 F.3d 749 (1996)

Facts

The International Star Class Yacht Racing Association (ISCYRA) (plaintiff) was a nonprofit corporation that governed and promoted the sport of Star Class yacht racing. ISCYRA owned a trademark in the yachting context for the words “STAR CLASS” used for various yachting products sold by ISCYRA. Tommy Hilfiger, U.S.A., Inc. (Hilfiger) (defendant), a successful designer and marketer of men’s clothing, decided to use ISCYRA’s “STAR CLASS” mark on a new nautical clothing line with details from competitive sailing. Hilfiger requested that its attorneys conduct a trademark screening search on the words “STAR CLASS” limited to federal trademarks in a clothing classification and did not reveal that the clothing line involved competitive sailing. The limited trademark search results revealed no identical registered or applied-for federal trademarks in clothing. Hilfiger’s attorneys advised running a comprehensive trademark search before using the words “STAR CLASS,” but Hilfiger did not broaden its trademark search before producing the nautical clothing line. ISCYRA filed suit under the Lanham Trade-Mark Act and claimed that Hilfiger infringed its trademark in the words “STAR CLASS.” Hilfiger ran a comprehensive trademark search and discovered ISCYRA’s trademark, but Hilfiger did not recall its merchandise from retailers. The district court granted ISCYRA’s application for a permanent injunction against Hilfiger’s use of the “STAR CLASS” mark in the nautical clothing line. However, the district court ruled that Hilfiger did not act in bad faith or willfully infringe the “STAR CLASS” trademark. The district court denied an accounting of profits and attorney’s fees as an award. ISCYRA appealed.

Rule of Law

Issue

Holding and Reasoning (Oakes, J.)

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