Paul Frank Industries Wins Trademark Case Against Founder
A U.S. District judge has ruled on the trademark-infringement lawsuit that Costa Mesa, Calif.–based Paul Frank Industries brought against founder Paul Frank Sunich, who was fired in 2005 after negotiations for a buyout failed. Judge Cormac Carney decided in late August that Sunich may not design under the names “Paul Frank” or “Paul Frank Sunich.” Sunich and his former partners—Ryan Heuser and John Oswald—reached a settlement earlier this summer for Sunich’s interest in the company.
Paul Frank Industries, which registered the Paul Frank mark, brought the trademark-infringement lawsuit after Sunich collaborated on a T-shirt line, Treestitch by Paul Frank Sunich, with Chaser Merchandising, a Compton, Calif.–based manufacturer. The company argued that consumers would mistake Sunich’s latest line for theirs because of the name and the similarity in design. Sunich’s Treestitch line, like Paul Frank’s, is driven by cute characters and colorful graphics.
In the suit, Paul Frank argued that Sunich was attempting to piggyback on the goodwill earned by Paul Frank Industries and its name. Sunich, Heuser said in a statement, never used the name “Paul Frank” before launching the apparel and accessories company in 1995.
On Aug. 21, Carney ruled that Sunich may design under the “Paul Sunich” moniker and may use his full name on a business card but not in commerce. Sunich may also keep his Web site (www.paulfranksunich.com) and use it to keep readers posted on his former connection to Paul Frank Industries and his latest projects, but he is enjoined from linking the site to others selling his products. That’s a blow to Sunich, who rarely used his full name in his 10 years as a designer for the company. The average Paul Frank–ophile would be hard-pressed to link Paul Sunich with the iconic Julius the Monkey character, which catapulted Paul Frank Industries to success. But the ruling sets parameters for how Sunich can use his name and avoid further legal scuffles with his former brand.
Sunich and Howard King, Sunich’s attorney, could not be reached for comment. Executives at Chaser could not be reached for comment, but Sunich’s collection has been removed from the company’s Web site.
With the decision, Sunich joins a long list of designers who have lost the rights to use their names in commerce: Los Angeles–based contemporary designer Meghan Noland now designs under the name Meghan Fabulous; William Beranek, formerly of William B., now designs under the Nickel label; Henry Duarte lost the rights to his name when he parted with investors in his eponymous line; Jil Sander left her eponymous line and only regained the rights to her name when she rejoined the company; and French designer Herve Leger, whose eponymous line is now owned by BCBG Max Azria, lost the rights to his name when he left the company in 2000.
Attorney Greg Weisman, a partner at Los Angeles–based Silver & Freedman and head of the firm’s apparel-industry practice group, counsels designers to avoid using their personal name as a business name. “It is axiomatic that when a personal name doubles as the trademark of the business conducted by that individual, there is considerable risk that the trademark, and as such the right to use that personal name to identify the business of that individual, will be lost forever,” he said.
—Erin Barajas
