By way of background, Louboutin urged the Second Circuit to reverse the District Court’s order denying it a preliminary injunction on the grounds that Louboutin could not demonstrate that it was likely to succeed on its trademark infringement and unfair competition claims. In support of Louboutin and a reversal, Tiffany & Co. argued that the District Court’s opinion in this case had “adopted a sweeping and unprecedented per se rule against granting trademark protection to any single color that is used on any ‘fashion item,’ even where the color has achieved ‘secondary meaning’ and is associated with a single brand.”  INTA also weighed in alleging that the color red on soles of shoes was not aesthetically functional and that if left to stand the decision would “upend key aspects of trademark and unfair competition law, making it easier for third parties to use the brands of others.” 

YSL’s friends are professors of law who teach in the area of trademark and related fields (including a professor from my alma mater the University of Minnesota Law School). They argue that “functionality channels the grant of legal monopolies over product features away from trademark to utility . . .” They believe that the District Court appropriately recognized the importance of color to consumers in fashion markets. Aesthetic functionality of a trademark occurs where the consumer’s preferences for attractive product designs drive purchases. These professors further believe that competitors would be harmed if trademarks, such as Louboutin’s red soled mark, were allowed to monopolize certain colors. After discussing design patents, the law professors assert that there is a need to bolster the doctrine of aesthetic functionality to not only protect trademarks, but also design patent applications. 

Finally, the law professors dismiss Tiffany & Co.’s concerns for its own trademark because its rights are based on color marks for nonfunctional product packaging (i.e., the well-recognized robin’s egg blue). This same argument was also expressed in a comment to my prior post on INTA’s amicus curiae brief. 

In their brief, the law professors claim that “it is far from clear how Louboutin would be harmed if a woman mistakenly believes another woman’s monochromatic red shoes to be Louboutin.” I disagree. I have always wanted a pair (unfortunately, they were not under the Christmas tree this year), but would be less inclined to buy a pair if I saw another woman wearing poorly designed red sole shoes that I mistook for Louboutin’s shoes. Maybe, it is just me, but there are likely others who would have a similar reaction.   

The Second Circuit has its work cut out for it. This is a very important battle for color trademarks (and especially those trademark owners in the fashion industry that rely so heavily on color). Will Louboutin and its friends INTA and Tiffany & Co. prevail or will YSL and the law professors prevail?

You may recall a prior DuetsBlog post regarding the trademark battle in the Southern District of New York between two famous designers.   The Christian Louboutin companies sued competitor Yves Saint Laurent companies based on its federally registered trademark for “a lacquered red sole on footwear.”   In connection with this lawsuit, Christian Louboutin brought a motion for preliminary injunction.  In denying the motion, the District Court found that granting trademark rights to this use of red would “significantly hinder competition,” that is, “permit one competitor (or a group) to interfere with legitimate (nontrademark-related) competition through actual or potential exclusive use of an important product ingredient.” Christian Louboutin S.A. v. Yves Saint Laurent Am., Inc., 778 F. Supp. 2d 445, 454 (S.D.N.Y. 2011).   In declining to find a likelihood of success to enjoin Yves Saint Laurent, the District Court explained that it “c[ould] not conceive that the Lanham Act could serve as the source of the broad spectrum of absurdities that would follow recognition of a trademark for the use of a single color for fashion items.”  Id. at 457. 

Christian Louboutin has now appealed this decision to the Second Circuit.  As you likely read in Catlan McCurdy’s blog post, Tiffany & Co. submitted an amicus curiae brief on behalf of Christian Louboutin.  As any company associated with the fashion industry knows, color is often crucial to the company’s brand.  Tiffany & Co.’s robin egg blue is the subject of numerous trademark registrations for items such as jewelry, fragrances and handbags (Reg. Nos. 2184128, 2416795, 2416794).  Tiffany & Co. wants to keep the protection courts have afforded single color marks.

INTA also has submitted an amicus curiae brief in support of Christian Louboutin.  Specifically, INTA alleges that the District Court erred in rejecting the presumption of validity attendant to Christian Louboutin’s federal trademark where the narrower claim actually defined in the registration, namely a “lacquered red sole on footwear.”  Further, INTA alleges that the color red on soles of shoes was not aesthetically functional.  Such errors if left to stand would “upend key aspects of trademark and unfair competition law, making it easier for third parties to use the brands of others.” 

The importance of the appeal to the Second Circuit is highlighted by the amicus curiae briefs filed by Tiffany & Co. and INTA.  Color trademarks are an important form of intellectual property protection for fashion brands.  It will be interesting to see if Christian Louboutin, with the help of Tiffany & Co. and INTA, can convince the Second Circuit to protect its red-soled footwear.

Demstore.com and Washington Promotions & Printing, Inc. (collectively the “Demstore.com entities”) operate the website www.demstore.com where they sell election and campaign merchandise bearing the Rising Sun trademarks. OFA sent cease and desist letters to them. Yet, the Demstore.com entities continued using the trademarks on merchandise. 

The Demstore.com entities alleged that the trademarks were invalid based on laches. This means that the company argued that OFA had unreasonably delayed pursuing its claim in a manner that was prejudicial to Demstore.com. OFA countered that a laches defense was not available because the Demstore.com entities had intentionally infringed the trademark. 

OFA is likely wanting to use the Rising Sun trademarks for President Obama’s reelection campaign. It will be interesting to see if OFA can restrain the Demstore.com entities from using the trademarks.

GTL Fuel, LLC (“GTL Fuel”) filed trademark applications for “GTL Fuel” in connection with energy drinks and plastic tubes for packaging non-alcoholic drinks in test tube containers. It has obtained a trademark registration for GTL Fuel in connection with energy drinks. 

The Situation’s company has sued GTL Fuel for trademark infringement, unfair competition, among other things. The Complaint contends that GTL Fuel has been engaged in developing and marketing “products to fuel your GTL life,” including gym products, tanning products, laundry products, energy shots, bronzers, tanning lotions, and shampoos among other things. The Situation’s company contends that GTL Fuel is infringing on its trademarks and attempting to associate its products with the Situation and Jersey Shore. The Complaint alleges that GTL Fuel’s Facebook page only has two other pages it “Likes” – a cancer site and “DJ Pauly D” who is a Jersey Shore roommate of the Situation. Accordingly, the Complaint alleges that “it is apparent that GTL Fuel was created to capitalize upon the goodwill of Plaintiff’s Mark and the Mark’s association with [the Situation], and to illegally profit off of the use of the Mark in commerce.”

I have written a couple prior blogs about lawsuits where Facebook is a party. Facebook is not only involved as a party to lawsuits but is also a place where trademark holders can find evidence of others infringing on their trademarks. Other social media such as Twitter is another fertile ground for evidence of trademark infringement. Indeed, GTL Fuel announced a “Guido contest” in connection with its energy drink. This too appears to be a way for the company to link itself to the Situation and his Jersey Shore compatriots—as they often use the term on the show. 

The Kardashians and Jersey Shore roommates will likely not be the only reality stars filing for trademarks. As this new genre of television is so popular and capitalizes on marketing their brands, disputes regarding reality show related trademarks are likely to continue popping up.

Plaintiff Timelines registered the trademarks TIMELINES® and TIMELINEX.COM® in connection with its operation of the website called Timelines.com. This website allows users to record and share events and contribute photos, descriptions, videos, links and geographic locations. The lawsuit arose after Facebook announced an exciting new profile layout called Timelines stating, “tell your life story with a new kind of profile.” In the lawsuit, Timelines contends that it will go out of business if mega-giant Facebook is allowed to launch its “Timelines” layout. Accordingly, Timelines is seeking an injunction preventing Facebook from using this new layout. 

This lawsuit appears to have delayed Facebook’s official launch of the new Timelines profile. However, I performed a quick search on the internet and found an articlethat claims a process for allowing access to the new Facebook Timelines now. Specifically, it contends that a user can sign up for the app developer program in less than five minutes. As I am not technologically savvy, I declined to try.

We will have to wait and see if the little company Timelines can block mega-giant Facebook’s new profile layout and save its company.

The family has numerous trademarks. Kim Kardashian owns trademarks with her name that range from jewelry, clothing, cosmetics, perfume to entertainment. She has abandoned the trademark registrations for Kimberly Kardashian and kimsaprincess. Following the issuance of the Notice of Allowance for those registrations, she failed to file a statement or Use of Extension Request. This is likely because Kim Kardashian is the lucrative brand she has been building through her reality shows. Indeed, her September wedding reportedly cost $10 million (although she did not have to pay for it). This free multi-million dollar wedding was one of the many benefits of having built a mega strong brand. 

Her sister Kourtney Kardashian has registered her name as a trademark for numerous types of clothing and accessories.  Sister Khloe has a trademark for her name and for the mark “unbreakable bond by Khloe and Lamar” for fragrances and countless other products ranging from clothing, candles, eyewear, to jewelry. Khloe and Lamar recently launched their new unbreakable unisex fragrance. The process of choosing the fragrance and the bottle containing the product was well documented on the reality show Khloe & Lamar.

As mom Kris Jenner is brand savvy, she has also registered numerous trademarks related to her Kardashian daughters including: K Dash by Kardashian (referring to the family’s clothing store), Kardashian Kollection, Kardashian Khaos, and Kardashian Kurves.

Now Kylie and Kendall the youngest children of Kris Jenner have registered trademarks for their names. They each have at least seven trademarks and numerous trademarks for Kylie and Kendall. 

Kris Jenner knows the value of intellectual property and branding. Do you think that his mother-in-law will register trademarks for our local celebrity Kris Humphries?

Acting is not the only connection Justin Timberlake has to social networking. He and other investors recently bought the second leading social network site MySpace. It is rumored that they plan on revamping the site to emphasize music.   

Facebook started in February 2004 at the prestigious Harvard University and spread to other college campuses (as anyone who watched The Social Network knows) and is now taking over mainstream America. People of all ages have Facebook accounts. I admit that I have a Facebook account that helps me keep in touch with my relatives in Turkey, Colorado and Baltimore, and my friends around the country and across the world in Tokyo, France and Mumbai. As the popular social networking service is the subject of an Oscar-nominated movie and has a reported 75 million active users, it would be hard to dispute Facebook’s claim that its trademark is famous.

The not-so-famous Teachbook trademark (I had not heard of the site until seeing the dispute with Facebook) is used with a online business website that offers online networking services for teachers. As many students are Facebook users, many teachers avoid the popular Facebook site. In its advertising, Teachbook.Com, LLC asserts that “many schools forbid their teachers to maintain Facebook and MySpace accounts because of the danger that students might learn personal information about their teachers.” Teachbook touts the fact that it is a secure, professional online environment for teachers to communicate, share lesson plans and find online resources.

Last week, Teachbook.Com, LLC filed a motion to dismiss Facebook, Inc.’s lawsuit. Facebook, Inc. vigorously opposed the motion arguing that “all of the material Teachbook has submitted is used to refute a strawman argument: namely, that FACEBOOK owns blanket trademark rights in the word ‘book’ when used in connection with printed publications.” Instead, Facebook, Inc. contends that its complaint “accused Teachbook of infringing the FACEBOOK mark by using TEACHBOOK with a competing social networking service.” Teachbook.Com, LLC’s reply brief has not yet been filed with the Illinois court.

The social networking industry is a fertile ground for trademark battles. Time will tell whether Facebook, Inc. will prevail in its quest to make Teachbook.Com, LLC rename its networking service.

This cat fight initially involved Clorox advertisements that depicted multiple cats shunning and refusing to use a litter box with Super Scoop®. As a person who is allergic to cats, I had not seen (or at least not paid attention to) the advertisements then at issue. C&D asserted that these advertisements were demonstrably false and contradicted by C&D’s independently conducted research. In addition, C&D contended that the Clorox study that it believed was substantiation for the advertisements was severely flawed. First, the Clorox study used eight cats at the same time (I am breaking out in hives just thinking about it). C&D contended that inter-cat behavior can impact a particular cat’s use of the litter box. Such behavior does not relate to rejection or preference of a particular type of cat litter. Not surprisingly, C&D contended that a typical household does not have eight cats. Second, C&D contended that there was a smelly waste problem. The aggregated waste does not account for different cats producing different amounts of waste. (I am glad I was not involved in this study.)

The case was initially dismissed in February of this year when Clorox pulled the challenged advertisements. However, C&D re-filed the lawsuit in March to address a new advertisement that Clorox was running. C&D contended that the new advertisement was “falsely touting the alleged cat waste odor elimination superiority of Clorox’s Fresh Step cat litters.” These allegedly false claims “upped the ante” by being made against the entire line of Arm & Hammer® cat litter products. The showpiece of the new commercial according to C&D is “an eye-catching demonstrative that compares the ostensible performance of the two cat litters.” C&D commissioned an independent lab to conduct a sensory study disproving the allegations and depictions in the commercial.

Last week, United States District Court Judge Jed Rakoff of the Southern District of New York experienced this cat fight first hand. He heard expert testimony from each side regarding a Clorox test—“the jar test” involving trained panelists rating the smell of jars with cat waste and ingredients from each cat litter product. (I am glad I did not participate in this study either.)

Because advertising costs a lot of money and is so important, it is not surprising that many companies take to the courts for protection from alleged false and misleading advertising by competitors. Is anyone aware of other advertising disputes related to the furry felines or other trusty pets?

In August 2010, the United States District Court for the Southern District of New York (the New York Court) granted the Walt Disney Company’s motion for summary judgment on the issue of “forward confusion.” The remaining dispute involved whether “reverse confusion” had occurred. One of THOIP’s likely concerns is that consumers will think that THOIP is copying Disney’s brand and may not look favorably on THOIP.

You may recall DuetsBlog has run posts about the reverse confusion doctrine in the past. I posted “David and Goliath”relating to Texas pizzerias taking on Dominos and Steve Baird posted on the topic in connection with Lion’s Tap and McDonald’s, here and here. This doctrine basically protects smaller, lesser known, trademark owners whose trademarks are infringed upon by large multi-national companies with gigantic advertising budgets. The Walt Disney Company certainly fits this bill. When I walk through the Mall of America with my 6 1/2 year-old niece, Olivia, it is relatively impossible to escape the pull of the Disney Store. You may have experienced a similar phenomenon. Most, if not all, children have something at their house associated with the Walt Disney Company, be it a stuffed animal or DVD.

If my niece and I ventured to Magic Kingdom in Florida, we would likely see the Miss Disney or Little Miss Disney t-shirts. Per Wikipedia, Magic Kingdom has often also been used as an unofficial nickname for Disneyland Park before Walt Disney World was built in Florida. However, the official tagline for Disneyland is “The Happiest Place On Earth,” while the tagline for Walt Disney World’s Magic Kingdom is “The Most Magical Place On Earth.” Despite the similarities, the Florida park’s tickets have always included the official name of Magic Kingdom. In 1994, in order to differentiate it from Disneyland, the Florida theme park was officially renamed to “Magic Kingdom Park,” but as Olivia and most youngsters know, it is most often called Magic Kingdom. I digress. According to the New York Court’s opinion, the Miss Disney and Little Miss Disney t-shirts can be purchased at the Magic Kingdom or Disneyland theme parks (the only other place to purchase them is the World of Disney Store in New York, which is now defunct). From my quick search on Google, it appears that you may also purchase some of the t-shirts on the Internet.

By way of background, following the August 2010 ruling, the New York Court had reopened discovery to allow THOIP to submit evidence of actual confusion. Unfortunately for THOIP, a couple of weeks ago, the New York Court excluded the survey evidence THOIP had submitted. In doing so, it explained that the “survey failed to replicate actual marketplace conditions, lacked a proper control, improperly counted certain responses as indicating confusion, and suffered from demand effects.” This was a fatal blow to THOIP. In looking at the likelihood of confusion factors (a/k/a the Polaroid factors – named after the famous case), the New York Court explained that had THOIP submitted strong admissible survey evidence it would have allowed the case to proceed on the reverse confusion issue. As THOIP had not done so, the New York Court granted summary judgment in favor of the Walt Disney Company.

Although THOIP did not prevail, reverse confusion remains a weapon in the arsenal of smaller trademark owners. The take-away is that survey evidence is often important to prevail in such cases. 

Is anyone aware of any other potential reverse confusion claims that have been or that should be brought?

by merely using red nail polish on the bottom of a shoe nineteen years ago. In August 2006, he registered the mark described as “The color(s) red is/are claimed as a feature of the mark. The color red appears in the design representing a stylized red sole.”   This idea has now been launched into a shoe empire with stars and ordinary women laying down from $600 up to as much as $4,500.  Mr. Louboutin’s shoes look especially good walking down the red carpets at award shows or at movie premiers. Stars such as Madonna, Sarah Jessica Parker, Angelina Jolie and Beyonce are often seen on these carpets wearing them. Jennifer Lopez even sang a song about her favorite shoes.  

It is no wonder that Christian Louboutin and his companies sued rival designer Yves Saint Lauren (“YSL”) when that company developed a cheap knock-off brand of shoes with colored soles.  Specifically, earlier this month, Mr. Louboutin sued YSL raising claims of trademark infringement, false designation of origin and unfair competition, trademark dilution and various state law claims in federal court in New York. YSL will likely argue that the trademark does not cover its shoes because the red soles on its shoes do not have a glazed look and its other pairs have different colored soles such as purple and green. 

Will the court find that the Red Sole Mark has a secondary meaning that is protectable? Does the public associate the color with a single source? Other colors have been given color trademark protection, including my namesake Tiffany’s robin egg blue color. As you may recall from my prior blog post, Tiffany & Co. has been involved in its own trademark litigation. Moreover, UPS brown is another color trademark that includes the following registrations, here, here & here.

In the landmark decision Qualitex Co. v. Jacobson Products Co., 115 S.Ct. 1300 (1995), the Supreme Court found that the green-gold color of a dry cleaning press pad could be trademarked. Prior to this decision, those accused of infringement often had argued that color alone could not be trademarked, because such trademark status for colors would soon deplete the number of colors available for an object.  Rejecting this argument, the Supreme Court stated that substitute colors would be available. As long as the color attained a “secondary meaning” so as to indicate its source, a color trademark is valid.   

What other color trademarks are you aware of or you believe should be registered for a trademark?