JA Apparel v. Abboud

At the heart of the dispute was the interpretation of a Purchase and Sale Agreement (“Agreement”) executed on June 16, 2000. In exchange for a substantial payment, Abboud agreed to “sell, convey, transfer, assign and deliver” to JA Apparel “all of [his] right, title and interest in and to ' [t]he names, trademarks, trade names, service marks, logos, insignias and designation identified on Schedule 1.1(a)(A),” which included Joseph Abboud, “and all trademark registrations and applications therefor, and goodwill related thereto.” Abboud I, 591 F. Supp.2d at 306. On July 13, 2000, the same parties entered into a Side Letter pursuant to which Abboud agreed to serve as “Chairman Emeritus” of JA Apparel and provide consulting services relating to the products sold under the foregoing marks. The Side Letter also included a two-year non-competition provision.

Shortly after execution of the Agreement and Side Letter, the parties' relationship began to deteriorate. In the spring of 2005, Abboud informed JA Apparel that he would no longer continue to work with it. In August 2007, after expiration of the non-competition period, JA Apparel learned of Abboud's intentions to use his name in marketing and advertising a new men's clothing line called “jaz.” In particular, Abboud had several proposed ads for the “jaz” clothing line, each of which included the words “Joseph Abboud” in addition to Abboud's new trademark, “jaz.”