Judge Says Quiksilver, Kymsta Can Use Similar Roxy Names

A federal judge has ruled that apparel maker Quiksilver Inc. and its smaller rival Kymsta Corp. can continue using their similar Roxy brand names.

Quiksilver, the world’s largest surf-wear maker, sells apparel under various brand names. Its popular Roxy brand for girls makes up about $200 million of its $1 billion in annual sales.

But Los Angeles-based Kymsta also sells a line of clothing for girls with the Roxywear name and similar variations.

In his ruling issued Friday, U.S. District Judge Dikran Tevrizian said both labels were valid, federally protected trademarks. But because Huntington Beach-based Quiksilver waited too long to assert its right to the names, Tevrizian said, it couldn’t prevent Kymsta from using Roxywear on its clothing.

“We’re happy that we get to use our name,” said Art Pereira, owner of Kymsta. The privately held company had sales of $7 million, about $2 million of which came from its Roxywear line of girls clothing.

Still, the judge set some limits on Kymsta. Kymsta can use the Roxywear names as a shirt label inside clothing but not as a logo on the outside of apparel. Kymsta also cannot license the Roxywear name or directly advertise its products to consumers -- points Quiksilver considered key.

“We just wanted to make sure they couldn’t take their Roxywear label to a wide distribution channel,” said Quiksilver general counsel Charles Exon, who called the ruling a “vindication.”

The dispute began nearly two years ago when Quiksilver sued Kymsta, Pereira and his wife, Roxanne Heptner, alleging trademark infringement. .