Sam Edelman is known in fashion for his stylish, comfortable footwear. The "Sam" of the trend setting "Sam & Libby" footwear line, his signature line of women's shoes combine fashion forward style with comfort and craftsmanship.  His shoes are sold in Macy’s and Nordstroms as well as other stores across the country.  However, as the TTABlog reports, being well-known as a footwear designer does not entitle one to use his or her name when the line expands.  In its most recent precedential decision, the Trademark Trial and Appeal Board (“TTAB”) affirmed a refusal to register the SAM EDELMAN  mark for use on “luggage, handbags, purses, wallets, all-purpose tote bags, all-purpose sports bags, backpacks” in Class 18.   The basis for the refusal was a likelihood of confusion with the EDELMAN mark registered by a different party for use on handbags, luggage trunks, among other goods in Class 18.  The TTAB affirmed the examiner’s refusal even though the SAM EDELMAN mark (Registration No. 3,271,895) was already registered for use on “footwear, namely, boots, shoes, slippers and sandals.”  In fact, the TTAB specifically noted that “…the fact that SAM EDELMAN is an individual’s name does not give applicant an unfettered right to use that name if it conflicts with a previously registered mark.”

While the TTAB may have given his newest application the boot, Edelman can continue to use his mark on his signature footwear.  For any additional product lines, Edelman may have to use a different mark.

Aimee Kaplan, the trademark attorney dedicated to celebrity branding

Copyright 2008 Aimee Kaplan