While watching Lena Dunham stumble in her 6-inch Louboutin red-soled heels during the 70th Annual Golden Globe Awards broadcast, our comments revolved around the fact that her dress was so long, she should have worn slippers instead of stilettos. We believed that Ms. Dunham should have waited to wear the Louboutin shoes until she was wearing a shorter dress in order to showcase them – and she shouldn’t have worn them when she was walking on stage while more than 9.9 million people watched her.
Unbeknownst to me at the time, the battle between Louboutin and Yves St. Laurent was heating up again. You may recall the numerous DuetsBlog posts dedicated to the battle in the New York District Court and Second Circuit. See, among many others:
To recap, the Second Circuit reversed the lower court’s decision and held that Louboutin was allowed to retain a trademark relating to color in the Fashion Industry (something the District Court had disagreed with, finding that Louboutin was unlikely to prove its red outsole brand was entitled to trademark protection). However, it was not a total victory for Louboutin. The Second Circuit limited the registration, stating (emphasis added):
Pursuant to 15 U.S.C. § 1119 the Director of the United States Patent and Trademark Office shall make appropriate entry upon that Office’s records to reflect that U.S. Trademark Registration No. 3,361,597, held by Christian Louboutin and dated January 1, 2008, is limited to a red lacquered outsole on footwear that contrasts with the color of the adjoining (“upper”) portion of the shoe.
The United States Patent and Trademark Office (“USPTO”) is now addressing the issue of amending the Louboutin mark in U.S. Trademark Registration No. 3,361,597 (“the Registration”). I reiterate the comments of my colleague Steve Baird in his Louboutin & Lessons Learned post, “know the inherent or implied limitations in your non-traditional trademark rights and registrations, they may become express limitations when a court gets involved.” This is precisely what happened here. As Steve pointed out, the limitation was implied, given the specimen of record provided by Louboutin. Once in the hands of the Second Circuit, the USPTO was then left to amend the registration consistent with the instruction of the Second Circuit.
Based on that instruction, the USPTO proposed the following amendment to the description of the mark in Registration No. 3,361,597 (the USPTO underlined the changes made to the current mark):
The color(s) red is/are claimed as a feature of the mark. The mark consists of a lacquered red outsole on footwear that contrasts with the color of the adjoining remaining portion of the shoe (known as the “upper.”) The dotted lines are not part of the mark but are intended only to show the placement of the mark.
Louboutin did not agree to this amendment and instead argued that the following amendment should be adopted:
The color(s) red is/are claimed as a feature of the mark. The mark consists of a lacquered red outsole on footwear that contrasts with the color of any visible portions of the shoe. The dotted lines are not part of the mark but are intended only to show the placement of the mark.
The USPTO concluded that this was not within the scope of the Second Circuit’s mandate and rejected Louboutin’s arguments.
Not ready to retire its fight for a more expansive Registration, Louboutin filed a request with the Second Circuit to extend the deadline for it to consider arguments related to the USPTO’s pending amendment to the Registration. The parties have until February 4, 2013 to seek clarification of the language used by the Second Circuit. It looks like the Second Circuit is now in the trademark registration business. I believe we have not heard the last of this battle.