Quiksilver, Inc. said it had once again prevailed in its Federal court trial against Kymsta Corporation and Kymsta’s claims against Quiksilver and Quiksilver’s “Roxy” trademark. Kymsta had appealed Quiksilver’s last two trial victories in the long-standing dispute.
In the most recent action, and consistent with the outcome of the first trial in 2004, the Ninth Circuit Court of Appeals imposed a very broad injunction on Kymsta to narrowly restrict its activities and use of its offending “Roxywear” name in order to eliminate any consumer confusion in the marketplace and the ability of Kymsta to trade on the fame of the “Roxy” trademark, according to Quiksilver.
Kymsta Corp, a small manufacturer in Los Angeles, last week claimed it won the right to use the Roxywear name for apparel in its latest appeal.
Robert B. McKnight, Jr., Chairman, Chief Executive Officer and President of Quiksilver, Inc., said in a statement, “We are again pleased with the decision of the court and we hope that this judgment finally marks the end of the line for Kymsta on this issue. As a matter of principle and financial responsibility, we are deeply committed to protecting and defending our trademarks. This victory protects our valuable Roxy mark and protects consumers from confusion in the marketplace.”
To protect the “Roxy” mark against Kymsta’s use of the confusingly similar “Roxywear” name on juniors apparel, Quiksilver originally filed the action, Quiksilver, Inc. vs. Kymsta Corp., in the United States District Court for the Central District of California in May, 2002. After a two-week jury trial in 2004, the Federal District Court awarded Quiksilver judgment as a matter of law, granting Quiksilver the relief it requested. The resulting very broad injunction limited Kymsta to its then-current use of “Roxywear” as non-branded private label product with qualifying characteristics to clearly identify that it was owned by Kymsta and with very limited distribution rights, and prevented Kymsta from expanding, licensing or selling the mark.
Kymsta appealed the injunction, and the Ninth Circuit Court of Appeals in 2006 reversed the order, finding that certain issues should have been decided by the jury, and remanded the case for retrial.
At the conclusion of the three-week retrial in 2008, the jury unanimously found that Quiksilver’s “Roxy” trademark is valid and protectable and that Kymsta’s “Roxywear” infringed the “Roxy” mark and constituted a false designation of the origin of Kymsta’s goods. As the prevailing party, Quiksilver was also awarded a judgment to collect all of its court costs from Kymsta. Kymsta again appealed the 2008 ruling, which resulted in the recent decision made by a three-judge panel in the Ninth Circuit Court of Appeals.
McKnight further stated, “From the beginning we had proposed a co-existence agreement that offered Kymsta the ability to retain their then-current use of the Roxywear name. It’s unfortunate that Kymsta has caused each of us to expend significant time and financial resources to arrive at a conclusion that is more restrictive on Kymsta than the original offer we made to them nearly ten years ago. Nevertheless, we are pleased to have had an opportunity to successfully defend our corporate reputation and principles and to receive the court’s validation of our Roxy trademark rights. We also thank the jury and the court for their hard work and feel totally vindicated with an outcome that significantly restricts Kymsta’s use of the Roxywear name and thus serves to prevent any future confusion with our Roxy trademark, and that appropriately holds Kymsta responsible for our court costs.”
