A recent Mall of America and Nordstrom shopping trip (with visiting extended family), coupled with some initial moments of admitted boredom, led me to wandering through the shoe department:

Let’s just say, the stroll through the shoe department made it all worthwhile, to capture the above image, showing Louboutin’s latest fashion sense, leading to my mental stroll down memory lane:

Louboutin Red: Blending Into the Background

Louboutin Red-Sole & Surrounding Contrast: An Implied Trademark Limitation

Louboutin: Still Waiting on the Second Circuit Court of Appeals

Louboutin Wins Second Circuit Appeal, Sort Of . . . .

Louboutin & Lessons Learned

That seven month span of blogging was pretty special (February 12, 2012 through September 17, 2012), actually making the case for narrowing Louboutin’s red sole color trademark registration.

In the end, the Second Circuit Court of Appeals ordered the amendment of the red sole color registration to compel the limitation we said was implied: Contrast with the remainder of the shoe.

This, of course, opened the door to requiring that Louboutin tolerate monochrome red shoes, as any red soles on a monochrome red shoe would not possess the necessary constrast to be seen.

Since then, Louboutin has been seeking global protection for his contrasting red-color trademark applied to shoe soles, with a recent win in the EU, however, he’s currently been snagged in India.

Given the striking shoe above, other Louboutin spiked shoes below, and knowing Louboutin’s comfort with non-traditional trademarks, filings at the USPTO seemed plausible, but no, none yet:

Afterall, the spikes appear purely ornamental with the potential for acquired distinctiveness, and no functionality, well, unless this footwear is designed for, shall we say, painful kicks in the pants.

At this point, the Louboutin brand appears synonymous with the red-sole of a woman’s shoe, which probably explains the non-verbal trademark below being applied to other fashion items:

 

 

So, we’ll keep a lookout for new non-traditional trademark filings by Louboutin, while you keep a lookout for any look-for advertising that might set the stage for claimed rights in a spiked mark.

#TheDress phenomenon is about to shape the future of color trademarks and trade dress rights.

You may recall, we have written a great deal on the subject of non-traditional trademark protection of colors, especially during the Christian Louboutin red-soled shoe trademark lessons, but more recently we wrote about the legal implications of color selections in branding strategy.

Enter #TheDress . . . .

No one could have foreseen the next viral sensation before last Thursday, and to the extent you’ve been in the dark on this one until now, meet #TheDress that has dominated the press, or most recently provided the most credible threat of “breaking the internet“:

TheDress
BuzzFeed picked up the Tumblr post by “swiked” and promoted it through its widespread distribution channels, and the rest is internet history.

There are basically two camps in this worldwide online debate, one will “say yes to the dress,” perceiving it to be black and blue, while the other will only say yes to the obviously white and gold dress that they see; amazingly both camps are viewing the exact same image.

So, how can that be? According to NBC’s Today Show:

“It’s a perception issue. It’s the way the brain processes information that comes in,” eye surgeon Paul Dougherty told TODAY. “Everyone’s brain is different, so even though it’s the same stimulus coming in, which it is, everyone processes the information differently.”

Others have further explanations for the neuropsychology behind #TheDress phenomenon. Forbes had an interesting guest post from Steven Pinker, professor in Harvard University’s Department of Psychology, that provides a very detailed explanation of why the image of #TheDress provoked the different perceptions:

“Back to the human perceiver. Brains are so good at color constancy that they often succeed even when looking at a photograph of a scene rather than the scene itself. That is, the brain often compensates for color casts in a photo and allows us to see the colors of the objects in the photograph as they would be in the world. But only up to a point – sometimes the same atypical conditions that fooled the camera (such as mixed lighting and unusual materials) can fool the brain, too. The blue-dress photo is one of these marginal cases. Some viewers see the scene as the camera apparently did, interpret the dress as if it were bathed in a bluish light from the shade, and see its colors as white and gold. Others glean enough information from the image to correctly see the dress as illuminated by a brilliant warm light, and hence see the light-bluish portions as deep blue. By the same calculation, a dark yellow patch on the retina (if it came from a surface bathed in bright warm light) would have to be a dark neutral, to wit, black.”

In addition, CNN quoted Dr. Julia Haller, the ophthalmologist-in-chief at Wills Eye Hospital in Philadelphia, as explaining our perception of color this way:

“Ninety-nine percent of the time, we’ll see the same colors. But the picture of this dress seems to have tints that hit the sweet spot that’s confusing to a lot of people.”

Perhaps most interesting, but the least scientific, CBS New York reported one possible explanation of why you might fall into one camp or another:

“Another theory is more philosophical in nature – if you see black and blue, you are dealing with stress in your life, while if you see white and gold, everything is fine.”

You can only imagine what my family did with that theory over the weekend. The stress theory continued to emerge throughout our discussions in my home over the weekend. We comically treated #TheDress image as a modern sort of mood ring deserving repeated measurement, depending on the changing emotional circumstances during any given moment.

My wife and one son, almost exclusively and proudly see white/gold, my daughter and two other sons, accused of consistently having a darker mood, saw only black/blue. What about me? I continue to see white/gold about 50/50 with black/blue.

Perhaps a few hours on a psychiatrist’s sofa would shed some meaningful light on my chameleon like perception? Or perhaps it simply suggests a keen ability to see both sides of an issue, at least until a client picks the right answer. I’m going with the latter explanation.

So, back to the science of color, what does all this say about color trademarks? Since consumer perception controls trademark determinations, will brand owners be inclined to attempt replicating #TheDress phenomenon in their trade dress, packaging, and color marks? Is it even possible?

No doubt, #TheDress is a good reminder that we all perceive color uniquely, so knowing the range of possible perceptions among the relevant population is critical to understanding one’s scope of rights in a single color trademark or color-combination trade dress.

Indeed, assuming a brand owner can replicate the phenomenon, after #TheDress is there such thing as a Single Color Trademark any longer?

What do you think? Will #TheDress phenomenon impact trademark rights in color marks? How?

Unless you have created a highly stylized, distinctive, graphic representation of a generic designation, perhaps something like the Miller Lite script, don’t bother trying to own or enforce it:

 

Most likely, you’ll end up regretting the decision to enforce, when the court of public opinion weighs in, after the social media shame-wagon flogs it as another example of trademark bullying.

Lagunitas Brewing filed this complaint in federal district court for trademark infringement against Sierra Nevada’s Hop Hunter IPA, because the generic acronym IPA (standing for India Pale Ale) appeared in black all capital letters (perhaps the lowest common denominator for stylization):

 

 

 

 

 

 

 

 

 

Lagunitas claimed: “This proposed design uses all capital, large, bold, black ‘IPA’ lettering in a font selection that is remarkably similar to the iconic Lagunitas design and, indeed, is the central and most prominent feature of the new Sierra Nevada design, emulating the iconic Lagunitas family of IPA trademarks. . . . ”

The thing is, Lagunitas probably has the potential for a very, very narrow trademark right in its stylization of the IPA graphic, but I’d hardly call Sierra Nevada’s version “remarkably similar” — moreover, I’d suggest that near identity and probably other similar trade dress elements would be needed to have a plausible likelihood of confusion claim.

Lagunitas seems to have forgotten how it explained in far more detail — in paragraph 16 of its complaint — the claimed distinctiveness of its graphic representation of the generic IPA acronym on product packaging:

“The unique ‘IPA’ lettering used in the Lagunitas ‘IPA’ Family of Trademarks has a distinctive serif font, distinctive kerning (or letter spacing), between the ‘P’ and the ‘A’, slightly aged or weathered look, with uneven areas on each of the letters, and the elimination of any periods between the letters. These elements together are unique to the iconic design of the Lagunitas IPA. The overall effect of these factors (the all-capital, large, bold, black serif lettering style, and the placement with respect to other wording and design elements) creates a unique, iconic design that is associated with and signifies Lagunitas and its associated reputation for excellence in the craft brew industry and among consumers.”

Assuming for the moment that Lagunitas has a narrow trademark right in its graphic representation of the generic IPA acronym, the problem remains, all the claimed elements aren’t present in the Sierra Nevada Hop Hunter IPA package design.

Probably the most unique aspects of the visual identity (the “slightly aged or weathered look, with uneven areas on each of the letters”) are not present in the Sierra Nevada design, putting aside the fact that the HOP HUNTER trademark obliterates at least a quarter of the IPA lettering.

It’s kind of like complaining about the use of the words “Eat More Kale” when the words are spelled correctly without dripping black “Eat Mor Chikin” ink from cows with poor grammar and penmanship, or perhaps it’s also like targeting a monochrome red shoe when the non-traditional red color trademark covers only the red sole portion of the shoe as a contrasting color.

Let’s face it, Lagunitas is another painful reminder to brand owners that selecting appropriate trademark enforcement targets is no less important when narrow as opposed to strong trademark rights are claimed. Yes, the Lagunitas overreach reminds me of the ill-advised enforcement targets pursued by both Chic-fil-A and Christian Louboutin.

Having said all that, we remain hopeful this all ends well for Lagunitas.  Hopefully the wisdom of the Lagunitas’ apology and the almost immediate withdrawal of the lawsuit permits the brand to get back to business and avoid years worth of legal fees and further media flogging.

Legal types, would you have brought the Lagunitas’ trademark infringement claim?

Marketing types, how would you grade the Lagunitas’ apology in terms of content and timing?

Over the past five years, we have spilled a lot of black digital ink discussing trademark ownership of single colors. Color continues to be an important aspect of branding and differentiation in a variety of markets, including many you’d expect, and some you might not.

Christian Louboutin’s red color trademark helps to illustrate the importance of single color trademarks in the fashion industry.

Tiffany’s robin egg blue boxes help to illustrate the importance of single color trademarks in the luxury jewelry marketplace.

Although brown may not be the most glamorous color, it has done a lot for UPS, who has believed it can do a lot for you too.

Let’s not forget where this whole single color trademark ownership concept started, with Owens-Corning and the color pink for fibrous glass building insulation, remember the Pink Panther campaign?

And, while we’re on the subject of pink, what about T-Mobile’s magenta (hot pink) trademark recently afforded protection against AT&T’s use of a plum color in the wireless telecommunications industry? Here is a link to a copy of the decision granting T-Mobile a preliminary injunction against AT&T earlier this month.

Lest you operate under the misapprehension that color trademarks are limited to consumer goods and services, a couple of recent decisions from the Trademark Trial and Appeal Board (TTAB) demonstrate that color ownership is important to those in the medical device industry too.

As our friend John Welch covered so well over at the TTABlog, just last month:

“In a ‘somewhat unusual’ likelihood of confusion case involving the comparison of two color marks, the Board affirmed a refusal to register the color ‘teal’ for ‘medical devices, namely, guiding sheaths for use in conjunction with access needles, wire guides, and dilators for providing access for diagnostic and interventional devices in vascular and non-vascular procedures.’ The Board found the applied-for mark likely to cause confusion with a registered mark comprising the color “blue” applied to the tip and indwelling length of catheters. In re Cook Medical Technologies LLC, 105 U.S.P.Q.2d 1377 (TTAB 2012) [precedential].”

Now John — wearing the advocate hat for Covidien — as a service to all trademark types, has identified another tool that might be used to facilitate the coexistence of “teal” and “blue” marks, or in his client’s case, “red” and “pink” marks in the field of medical devices.

In Covidien LP v. Masimo Corporation, John defeated a motion to dismiss his petition for partial cancellation of a prior and blocking single color mark registration under Section 18 of the Lanham Act. His plan appears to be to compel a narrowing of the “red” registration, to the specific shade of red allegedly used by Masimo, “fire engine red” — Pantone PMS 185, so that Covidien’s pink (Pantone PMS 806) mark can peacefully coexist at the USPTO without any likelihood of confusion. Who knows, maybe he’ll be able to leverage a consent to registration now from Masimo?

But if not, the T-Mobile decision mentioned above didn’t seem to put much stock in the narrow shade-specific language found in the registration at issue there:

“This court finds and concludes that the Supplemental Register’s reference to Rhodamine Red U does not limit the mark protections T Mobile seeks.”

In part, because the facts showed that different shades of magenta had been used over time by T-Mobile. Any thoughts about whether this different perspective might be applied to impact whether Covidien is granted its request to compel a “narrowing” of Masimo’s single color registration from “red” to “fire engine red” and/or Pantone PMS 185?

How would you attempt to avoid having a broadly worded single color registration narrowed in a partial cancellation action under Section 18 of the Lanham Act?

Might it help to avoid slavish consistency of one exact Pantone shade of color? Might that impact your ability to establish acquired distinctiveness or secondary meaning in the first place?

As promised, here are some further thoughts, lessons learned, and remaining unanswered questions concerning the recent and long-anticipated decision of the Second Circuit Court of Appeals in Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc.

Lessons Learned for Marketing Types:

  • Single color trademarks may be owned, registered, and protected when they are distinctive and have acquired “secondary meaning” — even in the fashion industry.
  • Know the inherent or implied limitations in your non-traditional trademark rights and registrations, they may become express limitations when a court gets involved.
  • Adopt an intelligent enforcement strategy, especially when it comes to non-traditional trademarks, since there can be a judicial undercurrent of skepticism about the validity of those rights and serious questions about whether granting the requested relief will significantly hinder competition in the relevant market.
  • If you own the particular placement and position of a non-traditional trademark on an item, don’t assume it is broad enough to stop all uses across the entire surface of an item.
  • While non-traditional trademarks are a wonderful way for brand owners to emotionally engage their consumers and cement strong relationships, it must not be forgotten that your competitors have the same options before them, making critical the need for appropriate due diligence when designing even purely ornamental and aesthetic features of a product.
  • Consistent with the importance of adopting an intelligent enforcement strategy, as Catlan wrote last week, pick your enforcement targets carefully, and I’d add: pick your forum carefully, as there continues to be “forum shopping” opportunities given the different legal interpretations of the Lanham Act followed by various courts around the country.

Further Thoughts for Trademark Types:

  • While I’m all in favor of formally narrowing the scope of Louboutin’s federal trademark registration to make express the limitation and requirement of visual contrast between the red outsole and the remaining elements of women’s high fashion shoes (a limitation I had argued was implied, given the specimen of record), I’m left wondering whether the direction to the USPTO to implement the limitation under Section 37 of the Lanham Act (15 U.S.C. 1119) should have come from the U.S. District Court, not the Court of Appeals.
  • Clearly, the assigned three judge panel of the Second Circuit Court of Appeals (Circuit Judges Cabranes, Straub, and Livingston) has taken a special interest in this case, removing from further consideration by the District Court anything other than Yves Saint Laurent’s counterclaims (discussed below), and directing “[i]n the interest of judicial economy, either party may restore jurisdiction to this Court to consider whatever arguments remain or arise relating to this case by sending a letter to the Clerk of this Court within 14 days of the District Court’s final judgment. Any such proceedings will be assigned to this panel.”
  • This panel of the Second Circuit Court of Appeals seemed to go out of its way to prevent the District Court from entertaining any further arguments from Louboutin in pursuing its non-preliminary judgment claims against YSL; why not affirm the denial of the preliminary injunction, set the District Court straight on the law, direct it to have the USPTO amend Louboutin’s registration, but then remand for further proceedings consistent with the order? I’m sensing a trust issue, wearing the clothes of “judicial economy” — what do you think?
  • The Court of Appeals disposed of Louboutin’s Lanham Act claims “because the red sole on YSL’s monochrome shoes is neither a use of, nor confusingly similar to, the Red Sole Mark.” — yet, in a couple of places in the decision, it purports to not address and expresses no need to address the ultimate question of likelihood of consumer confusion.
  • Deborah Peckham of Lex Indicium writes: “In essence the court is saying that there can be no confusion between use of single color contrasting mark on an outsole and use of the identical color in a monochromatic treatment that includes the outsole.  But do we really know that consumers could not be confused?  Couldn’t they?”
  • YSL’s first counterclaim is for cancellation of Louboutin’s red sole trademark registration on three grounds: (a) lack of distinctiveness, (b) functionality, and (c) fraud — based on the Second Circuit’s ruling, presumably it is only leaving the District Court to address functionality and fraud, since it agreed with the District Court on secondary meaning.
  • YSL’s second counterclaim is for damages for (a) tortious interference with business relations and (b) unfair competition; it will be interesting to see whether these damage claims were asserted merely for leverage or whether they actually will continue now that Louboutin’s trademark infringement claims are dead.

 Unanswered Questions:

  • What will others do with this surprising bit of dicta from the Second Circuit?: “It is arguable that, in the particular circumstances of this case, the more appropriate vehicle for the protection of the Red Sole Mark would have been copyright rather than trademark.”
  • Just because an artistic and decorative belt buckle might be conceptually separable from the subsidiary utilitarian function (and thereby subject to copyright protection), doesn’t mean that the placement of a single color on the sole of a women’s shoe is subject to copyright protection, right? I’m not seeing a valid copyright claim, are you?
  • When will the Supreme Court decide a case that addresses trademark aesthetic functionality, beyond dicta, so that the growing division among the various circuit courts can be resolved?
  • Will the Second Circuit’s reliance on YSL’s failure to use — in its monochrome red shoes — Louboutin’s contrasting red sole mark, encourage other defendants in non-traditional trademark cases to seek early dismissal on a non-use basis, as Google did so successfully, in the early days of the keyword buy cases. If so, will the non-use defense be successful? And, if so, will it be successful long term? By way of example, Google is no longer able to regularly short-circuit the keyword trademark cases with the non-use defense, it is now having to face and address the ultimate question of likelihood of confusion, see Rosetta Stone v. Google.
  • Last, what will be the extent of protection available to Louboutin, assuming his registration, now with the built-in color contrast limitation, survives YSL’s counterclaim for cancellation? What if another’s shoe is not 100% monochrome? What if it is almost all red, including on the outsole, but there are some black accents including a black border around the edge of the outsole border — is that enough contrast to warrant relief and protection? It’s one thing to impose a limitation of contrasting color so the red outsole can “pop” — it’s another to predict what the limits on the narrowed right will be and it seems unlikely that the right would or should be limited to purely identical uses, given the ultimate multi-factor test of likelihood of confusion.

–Catlan McCurdy, Attorney

Louboutin attempts to hypnotize you.

The most publicized trademark lawsuit in 2012 has now come to a close, and while Louboutin was denied its motion for a preliminary injunction, the company should be happy it didn’t lose everything.

As you might recall, the District Court initially denied Louboutin’s motion in August 2011 and then went one step too far, claiming that color alone could not be a trademark in fashion industry. The decision was surprising, and I thought overreaching. Louboutin obviously appealed, and argued against the decision before the Second Circuit in January 2012.

Eight long months later, the Second Circuit finally issued its decision, and as predicted here, reversed the District Court insofar as it purported to deny trademark protection to Louboutin’s use of contrasting red lacquered soles, but affirmed the District Court’s refusal to issue a preliminary injunction. The Second Circuit panel was courteous in its decision, stating that the District Court addressed “a difficult and novel issue of trademark law,” but nevertheless made it clear that the Supreme Court in deciding Qualitex specifically forbade the implementation of a per se rule that would deny protection for the use of a single color as a trademark in a particular industrial context. Fashion, dry cleaning, whatever.

The Second Circuit then went on to limit Louboutin’s registration to “only those situations in which the red lacquered outsole contrasts in color with the adjoining ‘upper’ of the shoe.” Because the shoe produced by YSL was a monochrome red shoe, there was no reason for an injunction.

In short, all this lawsuit did for Louboutin was to limit its own registration and cost a lot of money. My two cents? If Louboutin is serious about enforcing its what-we-now-know-is-valid trademark, then the company should start going after actual infringers, like the 16 year old in Ireland, and stop risking its intellectual property.

At long last, here is a pdf link to the decision, and here is the Second Circuit Court of Appeals summary in a nutshell:

“We conclude that the District Court’s holding that a single color can never serve as a trademark in the fashion industry, Christian Louboutin S.A. v. Yves Saint Laurent Am., Inc., 778 F. Supp. 2d 445, 451, 457 (S.D.N.Y. 2011), is inconsistent with the Supreme Court’s decision in Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 162 (1995), and that the District Court therefore erred by resting its denial of Louboutin’s preliminary injunction motion on that ground. We further conclude that Louboutin’s trademark, consisting of a red, lacquered outsole on a high fashion woman’s shoe, has acquired limited “secondary meaning” as a distinctive symbol that identifies the Louboutin brand. As explained below, pursuant to Section 37 of the Lanham Act, 15 U.S.C. § 1119 we limit the trademark to uses in which the red outsole contrasts with the color of the remainder of the shoe. We conclude that the trademark, as thus modified, is entitled to trademark protection. Because Louboutin sought to enjoin YSL from using a red sole as part of a monochrome red shoe, we affirm in part the order of the District Court insofar as it declined to enjoin the use of red lacquered outsoles in all situations. However, we reverse in part the order of the District Court insofar as it purported to deny trademark protection to Louboutin’s use of contrasting red lacquered outsoles. We enter judgment accordingly, and we remand for further proceedings with regard to YSL’s counterclaims.”

I really like what the Second Circuit did by narrowing the scope of the registration to require the element of contrast, sound familiar?

More analysis to follow . . . .

The current series of advertising billboards from Allianz — an international financial services company, with its parent company headquartered in Munich, Germany — are really wonderful, and their creativity inspired this post about brand name pronunciation. Here is one billboard example I recently captured in Minneapolis with my iPad, to the left.

How we pronounce words, names, places, and brand names can make a difference. Often the difference reveals whether you’re an insider or an outsider. For example, when you mispronounce my name, you prove you really don’t know me. In addition, to the extent there is one “correct” pronunciation of a word, place or brand name, saying it the “wrong” way can lead to humor and sometimes ridicule — at least for those who know how to say it “right” and are proud of it.

There were always good chuckles as a child when one of our grandmothers who visited us from east of the Mississippi would refer to the capital of Iowa as “Dez Moinez.” All things considered, she probably enjoyed outsider status. And I have no doubt that my wife and I were the butt of jokes when we arrived in Minneapolis more than twenty years ago, asking how to get to Wayzata, but calling it Way-zata, instead of Why-zetta (and, no, we didn’t learn how to incorrectly pronounce the town name from the erroneous references in Beverly Hills 90210).

Consider your last dining experience where a separate menu and wine list was left with your table already adorned with a white tablecloth and crystal stemware. Seems like some of the menu items and wine names exist for the sole purpose of making you feel like an outsider, at least at first blush. I still remember my first experiences with Gnocchi, Foie Gras, and Bruschetta. Restaurants that actually number their wine selections are especially kind to outsiders, no?

What about brand names, have you ever felt like an outsider when exposed to a new brand for the first time? Has humor ever surrounded the mispronunciation of a brand name, in your experience? To the extent Pronounce It Right is a reliable and accurate online pronunciation resource, many Americans regularly butcher the “proper” or “correct” pronunciation of many brand names — especially those originating outside the United States, brands such as Porsche, Yves Saint Laurent, Bvlgari, Christian Louboutin, and Louis Vuitton. Yet, PronunciationHub purports to offer “the single and correct pronunciation of this word” for Porsche, which still seems a bit Americanized, but probably less Americanized than how most say Volkswagen. It nevertheless acknowledges two versions for Nike, the European version and the American version. Finally, for what it’s worth, I’ve never heard anyone pronounce Chipotle Mexican Grill this way: Ship-uh-lay.

After South Korean automaker Hyundai’s Genesis model won North American Car of the Year, it ran this clever 2009 Superbowl 30 second television advertisement: “Win one little award and suddenly everyone gets your name right: It’s Hyundai, like Sunday.” Apparently PronunciationHub didn’t get the memo, as it’s Hi-Un-Dye to them.

What about trademarks? Well, if you regularly feel like an outsider when it comes to being corrected about proper brand name pronunciation, become a trademark type, where you can earn a living in a world where, you’ll be comforted to know, there is no “correct” way to pronounce a trademark, as the USPTO’s Trademark Manual of Examining Procedure (TMEP Section 1207.01(b)(v)) teaches:

“Similarity in sound is one factor in determining whether there is a likelihood of confusion between marks. There is no “correct” pronunciation of a trademark because it is impossible to predict how the public will pronounce a particular mark. Therefore, “correct” pronunciation cannot be relied on to avoid a likelihood of confusion. See, e.g., Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461 (TTAB 1985) (SEYCOS and design for watches held likely to be confused with SEIKO for watches and clocks); In re Great Lakes Canning, Inc., 227 USPQ 483 (TTAB 1985) (CAYNA (stylized) for soft drinks held likely to be confused with CANA for, inter alia, canned and frozen fruit and vegetable juices); In re Energy Telecommunications & Electrical Association, 222 USPQ 350 (TTAB 1983) (ENTELEC and design for association services in the telecommunication andenergy industries held likely to be confused with INTELECT for conducting expositions for the electrical industry); In re Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963) (CRESCO and design for leather jackets held likely to be confused with KRESSCO for hosiery).”

So, while there may very well be valid branding and marketing reasons to develop a “correct” pronunciation for a brand name, as some of the examples demonstrate, there will still be a wide variety of pronunciations adopted by consumers, probably explaining why the USPTO has determined there is no such thing as a “correct” pronunciation, at least when it comes to comparing marks as part of a likelihood of confusion analysis.

For other DuetsBlog guest posts discussing the pronunciation of brand names, consider these: Nancy Friedman’s That Story About the Chevy Nova? It’s a No Go, Mark Prus’ Sonic Bimbo, Nancy Friedman’s “Los Doyers” Goes Legit. Are You Cheering?, and Mark Prus’ Seemed Like a Good Idea at the Time…

–Catlan McCurdy, Attorney

Tara Haughton, a 16 year old from Ireland, sells stick-on-soles to transform your shoes into Louboutins.

Over at DuetsBlog, we have been anxiously awaiting the Second Circuit’s decision in Christian Louboutin v. Yves Saint Laurent. It was predicted that a decision would be made by early Spring 2012. Meanwhile, the French have already made their decision and moved on, covered by our own Tiffany Blofield here.

The British, however, are handling the Louboutin craze a little differently. The Telegraph reports that hundreds of Brits are taking matters into their own hands and painting the soles of ordinary shoes red to imitate the famous designer.

Sales of red gloss colours such as Duracoat’s ‘Flame’ and ‘Show Stopper’ have soared by 40 per cent compared to the same period last year and Homebase claim the surge is due to women copying the Louboutin shoes worn by their style icons which retail for up to £635.”

These consumers have decided the Louboutin price tag is too hefty for their pocketbooks, resorting to painting the soles of cheaper pumps red in order to impress strangers at cousins’ weddings. Or so confesses one Claire Stevenson, a 24 year old from Croydon, England, who told the Telegraph, “I received so many compliments at the wedding about my gorgeous shoes but I didn’t have the heart to confess they were DIY fakes. It was such a success I plan on doing the same for another pair of heels.” Let’s hope for Claire’s sake that she gave a fake name for that interview.

Christian Louboutin originally developed the famous red sole by painting the soles of a pair of black pumps with red fingernail polish after deciding that the shoes “lacked energy.” So, are our friends across the pond paying respects to Louboutin by imitating his method, or are these DIY consumers painting themselves right into a trademark suit?

I would think the latter, but realistically, I can’t see Louboutin suing individuals who are likely judgment proof. If they can’t afford to buy a pair of Louboutins, I doubt they would be able to pay damages for willful infringement. On the other hand, Tara Haughton, a 16 year old from County Kildaire, Ireland, looks like a potential defendant. Her company, Rosso Solini, sells stick-on-soles in a variety of colors, but it’s probably safe to say that she was inspired by Louboutin. Rosso Solini means “red soles” in Italian.

We’ll have to wait and see if Louboutin decides to file any more lawsuits before the Second Circuit decision breaks. In light of what just happened in France, I would expect that the designer is cooling his heels (yes, pun intended) and waiting for the Second Circuit as well.

As promised, some time ago, here is an enormous wall sign from one of the many hallways connected to one of the many shopping areas at The Shoppes at the Palazzo in Las Vegas, showing all these retail brands in simple lower case style.

No trademark notice or registration symbols either. . . .

Do you suppose the entity responsible for promoting the various retailers obtained clearance from the brand owners to use the brand names this way?

Marketing types, would you have encouraged this kind of use as a manager for one of the brands?

Trademark types, would you have ok’d this kind of use if you represented one of the brands?

So, what do you see, wall of fame, wall of shame, or something else?

Last, seeing christian louboutin on the sign reminds me, we’re still waiting for the Second Circuit Court of Appeals to rule on the red color case.