Elizabeth M. Sbardellati

Liz Sbardellati, Partner and head of the Trademark Protection & Enforcement Group, shared her insights with Glossy on trademark issues surrounding founder-led brands, including the potential for consumer confusion between the Jo Malone brand and its founder’s collaboration with Zara in connection with her Jo Loves brand.

Excerpts:

“Naming is a very important and serious consideration, and all of the pros and cons really need to be weighed strongly,” said Elizabeth Sbardellati, head of Greenberg Glusker’s Trademark Protection & Enforcement Group. “Any acquisition where the brand founder’s name is a primary brand asset is going to have strict contractual restrictions and controls over how that founder can use the name going forward, because that’s where the value is for the acquirer.”

“If we’re talking about the core trademark claim of likelihood of confusion or something like that, [it could be that] someone who’s not being particularly discerning sees Jo Malone on the packaging and thinks maybe it’s a sub-brand or a more value brand of Jo Malone, and that the Jo Malone brand is actually associated with Zara, not Jo Malone the person,” said Sbardellati.