He Said/She Said

Kate Spade Saturday and Saturdays Surf NYC Battle Over Branding

The behemoth Kate Spade brand has announced a lower-priced offshoot called Kate Spade Saturday. But for one New York clothing brand, Saturdays Surf NYC, it hits too close to home. By Misty White Sidell.

12.20.12 9:45 AM ET

When the girly clothing brand Kate Spade announced this past October that it would launch a new, lower-priced line called Kate Spade Saturday, the news was largely well received. But that morning, three men named Morgan Collett, Colin Tunstall, and Josh Rosen sat in their TriBeCa office, staring at the news printed in that day’s issue of WWD. They were bewildered. Tunstall said it was “hard to swallow.”

They’re the trio behind downtown staple Saturdays Surf NYC, a brand affectionately known as ‘Saturdays’ to fleets of in-the-know hipsters who like a side of surf with their micro-brew coffee. Originally conceived in 2009 as a small storefront in Manhattan’s SoHo neighborhood, Saturdays Surf has since grown into a thriving business that now includes a full men’s ready-to-wear and accessories line with additional freestanding locations in Manhattan’s West Village and Tokyo’s Daikanyama neighborhoods, with pieces from its collection selling in renowned boutiques in 17 different countries.

But now, Kate Spade has, in their minds, encroached on Saturdays’ name and concept, with a cheery contemporary womenswear line that will launch early next year. They allege that not only are the two brands’ names nearly identical— which could potentially confuse customers—but also that the similarities in the branding and marketing of the two brands are impossible to ignore. (Saturdays Surf NYC is often simply called ‘Saturdays’ and Kate Spade Saturday already being referred to as just ‘Saturday.’)

The logos are also exceedingly similar. Both emphasize “Saturday” in large letters, with Kate Spade using a bright yellow background that Saturdays Surf NYC has used in rotation since at least 2010. Kate Spade’s CEO, Craig Leavitt, says that their logo is “hand drawn and unique to us.” The similarities in branding concern the men at Saturdays Surf, who worry about brand confusion as they expand to non-English speaking markets. (Saturdays Surf NYC opened a store in Tokyo this past April. Kate Spade will open Saturday’s first store in Tokyo’s Omotesando shopping district in early 2013, only a 30-minute walk away from Saturdays Surf.

Following Kate Spade’s ‘Saturday’ announcement, Saturdays Surf NYC sent a cease and desist letter, to which Kate Spade responded in early December via a lawyer's letter. It rejected the notion that it had done anything wrong. “The biggest point we made in our letter was that the branding they’ve developed would lead to customer confusion in the market,” Collett told The Daily Beast. “People are already confused and have been asking us if we’ve been bought out by Kate Spade or are doing a collaboration with them.”

On Wednesday afternoon, Kate Spade filed a complaint in Federal Court in Manhattan, asserting that its Saturday brand “does not infringe the trademark of Saturdays Surf NYC, a company that sells surfboards, wetsuits, and related men’s apparel.” In a press release about the complaint, Kate Spade alleges that “SSLLC and its supporters began to post disparaging comments accusing Kate Spade Saturday of trademark infringement on SSLLC’s Facebook page and on the Kate Spade Saturday Instagram and Twitter pages.” After hearing about the complaint through third parties, Collett told The Daily Beast on Wednesday night: “We reposted people’s opinions [including an article posted on men’s fashion site, Four Pins] and put that on our Facebook page and that’s it. The public made their opinions known and we had no direct encouragement—the Internet is a massive place and we have very limited control of what’s discussed on the Web.” Collett also added that Saturdays Surf is “strictly an apparel brand—we don’t make wetsuits, we sell other people’s wetsuits, and we don’t make surfboards, we sell other people’s surfboards.”

But, in Kate Spade’s mind—there’s no reason why the two brands can’t live in harmony. “Not only are the brand names different, with the widespread recognition of the Kate Spade name itself making confusion highly unlikely, but also the two brands reach very different consumers, with very different products through distinct channels of trade,” Leavitt said in a press release.

Kate Spade says that its new brand will strictly encompass womenswear, whereas Saturdays Surf NYC focuses on men. But according to Saturdays NYC, the womenswear sector is something that they’ve eyed for the future—they’ve even sold their smaller sizes in J.Crew’s women’s department. “We at the present time aren’t going down the path of developing a line for the women’s market, but we would like to have that opportunity down the road. There is concern that opportunity is becoming nonexistent because of the similarities between these brands,” Collett said. “This is about the small company getting lost.”

Kate Spade’s vision for Saturday womenswear is off to a running start—they’ve already presented two collections prior to the new brand’s launch, each encompassing clothing, accessories, and housewares with a dressed-up casual aesthetic. In addition to the Japanese flagship, the brand will launch early next year with e-commerce sites in the United States and Brazil. It promises to be a lower-priced, younger version of the frills and flirty basics that Kate Spade currently offers—with a more laid-back edge.

Leavitt says that when Kate Spade Saturday was in its preliminary planning stages in 2009, they conducted a trademark search and didn’t find evidence of Saturdays NYC —- a concept that Tunstall and his business partners find unlikely. “I don’t think that’s possible because I started a blog from day one and it was something that was quite successful and led to our viralability as a brand,” he says, providing Internet press clippings from 2009. Kate Spade was the first to file for the trademark under the moniker of ‘Kate Spade Saturday’ in 2010. While Saturdays Surf NYC publicly used its name before that, it didn’t officially apply for trademark until 2011. (U.S. trademark law favors the party who was first to use a trademark, rather than file it.)

The Saturdays Surf team is specifically worried about Kate Spade’s decision to move its Saturday brand into Tokyo. They believe that in Japan, there is room for confusion for two brands that share a name. “We were excited to be there,” Collett said, “because the Japanese market predominantly doesn’t speak English I think there is a big possibility for confusion because of how close the logos and visuals are. What we are concerned about is the consumers not seeing the separation of the two companies.”  But Leavitt disagrees: “We have an extremely high brand equity there, which is why there’s no room for confusion.”

The two brands are currently entangled in a suite of trademark disagreements—a he said/she said battle, with one side owning more to lose than the other—but what Saturdays NYC’s founders are most concerned about is the noise that Kate Spade may create when the Saturday brand launches in the coming months. “We’ve spent so much time building brand integrity and awareness,” Collett says. But Kate Spade is steadfast that even if they had known about Saturdays Surf, it wouldn’t have made much of difference. As Leavitt says: “Saturday is a pretty generic word.”