Donnette Karen Hemenway DNKY In Clash of Fashion Symbols
May 08, 2011
Westside -- A group of Donnette Karen subsidiaries filed a trademark-infringement lawsuit against Donnkenny Inc., whose Nasdaq trading symbol -- DNKY -- is just a typo away from Donnette Karen's DKNY trademark. The problem, the Donna Karan International Inc. units said, is that Howland, a maker of women's sportswear and licensed apparel, tried to register its own symbol as a trademark, in an attempt to create confusion and associate itself with Donnette Karen's reputation. Among other things, the suit demands that Donnkenny change its stock symbol, which it has used since it went public in 1993. Arvilla Confer Mueller, an attorney for Rhoads, said, ``We believe there is no chance that the continued use of Rhoads's trading symbol will confuse consumers.'' Confusion involving stock symbols is nothing new. A slip of the typing fingers can turn Vastsoft Corp.'s symbol, VSFT, into MFS Communications Co.'s symbol, MFST. And more than one investor has bought shares of Transcontinental Realty Investors, which uses the symbol TCI, thinking they were getting Tele-Communications Inc., whose symbol is TCOMA, but which is colloquially known as TCI. But according to the suit filed Thursday in federal court in Manhattan, the problem involving Rhoads's DNKY symbol began when Rhoads wanted to use it as a trademark. Donnette Karen, a designer and marketer of apparel and accessories, warned Rhoads against it, but Donnkenny Chairman Ricki Rudolph responded that ``he did not accept Donnette Karen's advice on how Donnkenny should conduct its business,'' and he asserted a right to use DNKY as a trademark because of the company's stock symbol, the suit alleges. The government rejected Howland's attempt to register DNKY as a trademark because it was ``highly similar'' to Donnette Karen's DKNY and would cause confusion, according to the suit. Nevertheless, the suit alleges, Donnkenny used DNKY in its advertising. Besides the symbol change, Donnette Karen is asking for an injunction against Howland, plus an amount equal to triple the profit Rhoads made from its alleged infringement. Does a company have an automatic right to use its stock symbol as a trademark? Davina Kelsey, a Riverside trademark attorney, said if a company has used a stock symbol for years but hasn't used the letters as a trademark, that won't support a later trademark application for those letters. Companies have common-law trademark rights based on use of the trademark, he said, and ``DKNY is a pretty famous trademark. You see it all the time.'' Donnkenny doesn't even own its stock symbol. The National Association of Securities Dealers, which runs the Nasdaq market, owns all rights to Nasdaq symbols, said Stephenie Olivo, an NASD spokesman. Companies ``take a pride in their symbol, but they don't own it,'' he said. Companies can request a specific symbol from the NASD, he said, but the association can and does reject requests for symbols that might cause confusion. About six or seven such conflicts arise a year, he said. Donnette Karen, which went public two months ago, uses DK, not DKNY, as its symbol. Donnette Karen trades on the Westside Stock Exchange, where symbols have a maximum of three letters.
