Susan Scafidi was quoted in a Business Of Fashion article where she weighs in on the ongoing legal dispute between surfwear brand O’Neill and New York designer Thaddeus O’Neil.
“There is such a long history, particularly in the fashion industry, of designers using their names on the label and consumers’ understanding that companies may have similar but different names,” says Professor Susan Scafidi, founder and academic director of the Fashion Law Institute at Fordham Law School. The Institute has organised a pro-bono legal defense team for Thaddeus O’Neil. She says she is concerned, however, that O’Neil will end up being unable to use his name and that the result will have “a spillover effect for other designers.”
“My personal favourite legal tip for any emerging designer is please don’t [name your label after yourself],” says Scafidi, while recognising the marketing benefits and historical tradition of doing so. “Not so much for the reason we are discussing now, but because it turns your name into a cooperate asset. At some point you may have investors, you may eventually part ways with your investors and your name, as a trademark, becomes a corporate asset and you may have to walk away from it.” Donna Karan, whose namesake brand was sold by LVMH to G-III in 2016, is a prime example.
What recourse does O’Neil have now that O’Neill has shown signs of not backing down? “He can fight this on the grounds of tradition and by showing the opposite of what O’Neill is trying to claim, that the products are different,” says Scafidi.