J.C. Penney sued by Zumba over marketing campaign

Dive Brief:

• Zumba Fitness sued J.C. Penney this week in federal district court over claims of trademark infringement. A J.C. Penney spokesperson told Retail Dive in an email that the company does not comment on pending litigation.
• Zumba, which developed a fitness program of the same name and makes and licenses its own branded apparel and accessories, alleged in court papers that J.C. Penney unlawfully sold apparel while “maliciously adopt[ing] and us[ing] confusingly similar reproductions of the ZUMBA trademark.”
• At issue is Penney using the slogan “From A to Zumba” in its marketing of apparel even though the fitness company did not make or license any products for the retailer. Zumba is seeking to block Penney from using the Zumba name as well as damages, profit recovery and the destruction of products and promotional materials found to infringe on its trademarks.

Dive Insight:

Zumba alleged in its suit that Penney “intentionally marketed its products under the slogan ‘FROM A TO ZUMBA’ to mislead and deceive consumers into believing that such products were manufactured, authorized, sponsored, approved, or licensed by Zumba.”

Zumba, meanwhile, has its own e-commerce store and branded fitness apparel and accessories lines that it says compete directly with the fitness apparel J.C. Penney sold.

Penney, like a lot of retailers, has been sued over trademark claims before. In recent years, the retailer was sued by Burberry for allegedly selling scarves, jackets and coats featuring an exact copy of the “Burberry check” pattern that the fashion brand used for almost a century. (The suit was settled out of court.)

The retailer is certainly not alone. Target has also recently been hit with a high-profile trademark suit, by Burberry, as it happens. That suit, too, was settled. (Burberry has also sued off-price giant TJX Cos for allegedly selling counterfeits of the fashion brand, a suit that they later settled.)

Other major trademark suits include airline JetBlue suing Walmart in June over the branding of Jetblack, a personal shopping service targeting upscale urban shoppers. The airline argued that Walmart’s use of the name was confusingly similar to its own trademarks, especially as Walmart and Jet moved deeper into markets where JetBlue operates, such as travel and transportation services.

A lawsuit from a high-profile wellness company is about the last thing Penney needs at the moment, as the ailing department store retailer tries to put its house in order. Its campaign to promote fitness apparel comes as the retailer tries, with mounting urgency, to boost its womenswear sales after numerous fashion misfires in the past.