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.

There are at least two kinds of buzz converging at the moment (perhaps three), especially for fashion forward and fit oriented trademark types here in Minneapolis.

On the one hand, with the holidays upon us it’s hard to avoid the barrage of billboard ads in the Minneapolis skyway promoting the first brick and mortar entry of Bonobos into the Minnesota marketplace, strategically located in the buzzing North Loop neighborhood of Minneapolis:

BonobosBillboard

On the other hand (or pant leg), are the increasingly vexing trademark specimen of use and Lanham Act use in commerce requirements administered by the USPTO that limit how a brand owner is able to properly demonstrate evidence of use that will effectively support trademark and service mark registration and the ongoing maintenance of those registrations.

Yes, there has been quite a buzz in the trademark community about these vexing trademark specimen and use in commerce requirements (TTABlog, Likelihood of Confusion, and DuetsBlog). Happily, Strafford Publications has assembled a panel of trademark types (Linda, Jonathan, and yours truly) to address these issues in a live webinar on Tuesday January 31, 2017, stay tuned.

In the meantime, if you’d like to attend this webinar free of charge, be one of the first three to post a comment to this blog post. Perhaps you’ll learn how to overcome the pending USPTO specimen of use refusal that Bonobos is currently facing in a USPTO refusal, linked here.

Of course, one of the understandable common desires of a retail clothing store brand owner is to not only own registered service mark rights for its retail store name, but also trademark rights for the clothing and related items sold in its store or stores. And, one of the common desires of shoppers this time of year is to obtain two for one deals.

Leave it to a trademark type to blend the concepts. Life is so much easier for all involved in the trademark registration process when a single specimen of use is able to satisfy both trademark and service mark use; a bogo, killing two birds with one stone, a twofer, you get the idea, right?

Generally, an advertisement that promotes a brand’s retail store services is suitable for demonstrating use of the mark in connection with those services, but the advertisement won’t be appropriate for demonstrating use in connection with the clothing items sold there, unless the advertisement also “includes a photograph of the applied-for mark appearing on the goods or on packaging for the goods.” TMEP 904.04(b).

Armed and legged with that twofer knowledge, would the following floor to ceiling Bonobos advertisement displayed in the Minneapolis skyway system demonstrate both trademark and service mark use (if the full ad were shown along with a close up image of the button — adorned with the Bonobos name  — on the khakis, and trust me, it is fully legible in person)?

BonobosFloorCeiling

Is it still a twofer, if you need to submit two images to the USPTO for the same advertisement?

As you know, we’ve spun a lot of fabric over the last few years on the topic of brand and trademark truncation. Marketers seem to love the informality, emotionality, and efficiency of truncated brand names. I suppose trademark types love them too, since they can have the tendency to spin off a variety of complicated legal issues — all in dire need of sorting.

But, not to worry: A briefer brief brand is on the way. Yes, underwear giant Jockey recently launched a truncated form of its JOCKEY brand to just three-letters: JKY. Apparently there is much art and science to this decision and the associated marketing campaign focusing on attracting a much younger demographic.

This JKY brand truncation made me think about the recent Ralph Lauren truncation to RLX, a truncation that caught the watchful eye of Rolex’s trademark department, but to no avail at the USPTO, at least to date. Let’s just say, if the world famous Rolex brand isn’t strong enough to reach the RLX truncation, then that is probably a clear warning to most brand owners that they ought to seriously consider developing enforceable trademark rights in truncations they’d like to prevent others from using.

Had Rolex used and owned rights in RLX it wouldn’t have had to try and stretch the waistband of the ROLEX trademark to fit the difficult legal task of challenging RALPH LAUREN RLX or RLX RALPH LAUREN. And, by continuing to use the JOCKEY brand while creating rights in the JKY truncated form, Jockey should avoid the problem Rolex faced with challenging Ralph Lauren’s RLX.

Bringing it a bit closer to home, I’ve recently learned (through painful repetition) from my two youngest children — whose middle-school peer-group seems to embrace language and communication truncation — that “JK” means “Just Kidding.” Do you suppose this meaning was known by the brand managers at Jockey and helped prevent the further truncation to just two letters: JK? Or did JK Intimates play a role in stopping the truncation just short of two letters?

To complicate or perhaps confuse matters further, when I informed my fashion-conscious and brand-conscious sophomore son about my present blogging topic, his response: “Isn’t JKY too close to DKY?” I said, “do you mean DKNY?” His response: “Oh yeah, never-mind.” As far as I can tell, DKY points fairly uniquely to an integrated marketing communications firm in our own backyard, not another fashion brand.

So, in the end, we’ll have to wait and see whether Jockey is “just kidding” with a temporary truncation, or whether it will truly stand the test of time — using, of course, a Rolex watch.

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.

There has been quite a flap surrounding the poster and invitation used by the University of Pennsylvania Law School to promote Penn Intellectual Property Group’s Fashion Law Symposium, scheduled for a week from tomorrow. The symposium appears to be designed as a serious affair, boasting an all-star cast of general counsel from the fashion industry, including those from Ralph Lauren, Forever 21, and Coach — to discuss in the first panel: “Trademark and the Fast Fashion Phenomenon.” The second panel is set to discuss “Copyright for Fashion Design: Evaluating the IDPPPA.” Last, copyright scholar David Nimmer is addressing “Copyright and the Fall Line” in his keynote address, and a number of big name law firms are symposium sponsors or donors, including Kenyon & Kenyon, Fox Rothschild, Covington & Burling, and Finnegan (or, maybe not Finnegan any longer).

Louis Vuitton — owner of the likely famous trade dress and individual marks depicted on the designer bag shown above — objected to the use of the poster shown below in this cease and desist letter, and LV now has been branded a serial “trademark bully” for it (and past objections against other alleged infringements). The Penn Law School Associate Dean for Communications apparently agreed to cease use, but then the accommodation was formally withdrawn by the University’s Associate General Counsel, in this response letter, defending the poster as a clever parody. As far as I can tell, the coverage of this flap is highly critical of Louis Vuitton for sending the demand letter in the first place, and entirely in favor of the University’s final decision to not cease use; for some examples of the coverage, see Techdirt, Above the Law, Law of FashionEric Goldman’s Technology & Marketing Law Blog, The Volokh Conspiracy, Johanna Blakely, and Alison Frankel’s ON THE CASE.

While I tend to agree the tone of the LV letter was excessive, and a few carefully-placed phone calls instead of a written demand, with greatly toned down the rhetoric, likely would have been more effective, what has left me a bit surprised by the coverage of this dispute is the absence of any scrutiny of the University’s response or position.

And while some have suggested that Louis Vuitton was schooled on the law by the University and its students, I really think a closer examination reveals there are at least a few loose strings on the University’s garment.

Yet, it seems no one is asking any questions probing the University’s claimed parody, and my concern about the popular “trademark bully” label and a social media shame-wagon approach to this issue is it sends the wrong message in that it greatly oversimplifies a very complex body of trademark parody case law — decisions that most counsel as quite unpredictable if they ever go the distance.

Like it or not, unlike the defense of federal dilution claims where certain conduct is excepted from liability, neither noncommercial use nor parody is excepted from or an affirmative defense to trademark infringement. Parody is really just another way of saying, there is no likelihood of confusion, which no one will know for sure, without credible survey evidence of the relevant public.

So, an overly harsh skeptic (not me, of course) might have paraphrased the University’s “parody defense” with a heavy dose of sarcasm: “Louis Vuitton, can’t you take a joke? Our work is an effective and obvious parody of you, to anyone who sees it (assuming they actually notice it) — not just those who are privy to the joke. Yeah, we’re all in on it. The symposium we are promoting in this poster actually is a laughing matter, never-mind the otherwise serious topics and tone or that it has been approved for continuing legal education credits, not comedic credits. It always was and remains our intent to poke fun at and ridicule you, and just you, in your absence, of course, with even some of your competitors present, by the way, but now that you have seen it and complained, if you’d like to come, please join us for the festivities, we’ll save a special seat for you, you might actually learn something!”

I’m admittedly not familiar with prior PIPG symposiums, but it might be interesting to see promotional posters of those events, to determine whether a common theme or reputation of poking fun at third parties is present — if so, perhaps it has become a common element like the satire and parodies a reader of Mad Magazine has come to expect. Or perhaps, such history might better explain this claimed parody, as with consumers of parody pet toy products who have been found to recognize the parody from the clearly different uses and inherent incongruity. But, for the University to simply call it a clever parody, merely begs the question of whether it is an effective one, or whether it is nevertheless likely to cause confusion not only to source, but as to sponsorship, affiliation, connection, or approval, as well.

Is it not at least plausible that the modified LV artwork was designed to simply attract attention and fill seats in the auditorium, and not to make fun of LV, and that LV’s design was so meticulously reproduced that some who see it won’t even notice the subtle changes? After all, trademark parody case law certainly supports the proposition that the more outlandish, outrageous, shocking and/or offensive the parody, the less likely confusion will result. We’ll probably never know, but it wouldn’t surprise me at all — if survey evidence were pursued on these facts — to find support for an actionable level of likelihood of confusion as to LV’s sponsorship, affiliation, connection, or approval of the fashion law symposium, especially since LV noted it has sponsored such events by other schools (Fordham Law School’s Fashion Law Institute). This, it seems to me, is a key alleged fact overlooked in the Associate Dean’s response. Moreover, the focus on comparing luxury goods to educational seminars seems to miss the mark, as there appears to be a direct overlap in the sponsorship of fashion law seminars.

Other possible loose strings to tug on might be the University’s apparent belief that “lawyers, law students, and fashion industry executives who will attend the symposium” would have to believe that LV “organized” the symposium, for there to be a problem, as opposed to simply having some other connection with it, such as through sponsorship, affiliation, or approval. I also wonder about the narrowly defined scope of the relevant public, as the symposium is open to the public, and presumably more will see the poster/invitation and be influenced by it than those who actually attend.

Back to the application of the “trademark bully” label on these facts, beyond the fact that parody is not a defense to trademark infringement, it is just another way of saying, there is no likelihood of confusion, it is worth noting that the trademark parody cases are “difficult to outline with any precision,” and “a review of the trademark parody cases gives us few bright line rules.” Indeed, some have said the trademark parody cases reflect a “barometer of both the presiding judge’s sense of humor and sense of fairness.” These cases are not black and white. Given that, and for the other reasons mentioned, the facts of this example don’t appear to me to be conducive to a label that assumes the trademark infringement claim to be frivolous or lacking any objective merit.

So, while it may be stylish to apply the shaming “trademark bully” label to Louis Vuitton, at the moment, I’m not convinced it fits, at least on these facts.

Where do you come down on this example?

The Louboutin lacquered red sole trademark is the subject of great debate in the trademark world, fashion industry, popular news media, and among law school academics and friends of the court.

I’m just not seeing it. I really don’t see a viable trademark claim here for Louboutin. Not for the reasons found by the district court — I believe Louboutin’s mark is distinctive and valid. Instead, I fail to see a valid claim, in part, because the presence of a red-sole on a monochrome red shoe is simply not a trademark use because it blends into the background of an all-red pair of shoes.

Equally important to explaining why there is no valid trademark claim, is what I believe to be an inherent or implied limitation in Louboutin’s red-sole single-color trademark registration: The critical need for visual contrast between the red-sole and the surrounding portions of the shoe.

Louboutin Red-Sole Shoes
Louboutin Red-Sole Shoes
Yves Saint Laurent Monochrome Red Shoes

Let’s not forget that Louboutin’s specimen — found in the USPTO file history for the federal trademark registration — shows use of the red-sole with a contrasting color bordering the red-sole portion of the shoe (as you can see from the link, the specimen appears to show the contrasting color as lavender, not black, but a contrasting color no less). Had Louboutin relied on an all-red color shoe (with no contrasting color) in its specimen of use, registration would have been denied.

So, the answer to Louboutin’s overreaching, in my view, is not to invalidate the Louboutin red-sole trademark — as many have suggested — or discard the single-color non-traditional trademark law that has developed since the groundbreaking Owens Corning decision in 1985 and the Supreme Court’s endorsement of single-color trademarks in the 1995 Qualitex decision.

Moreover, it is not the answer to carve out the fashion industry from color trademark law or treat it somehow differently — as some have suggested — or prevent that industry from enjoying the benefits of single-color trademark rights when the claimed rights, in fact, meet the definition of a trademark by identifying, distinguishing, and indicating the source of the goods in question, as I believe the Louboutin red-sole mark, actually does.

No, at least to me, the answer to Louboutin’s overreaching in the Yves Saint Laurent case is to deny the requested relief because there is no trademark use of the red-sole on a monochrome red shoe and because it is fair use to make an entirely red-colored shoe.

Those who understand the nuances of the trademark field will appreciate that obtaining a single-color trademark that is limited by where the color is placed on a portion of an object is a much narrower and more limited right than claiming that same color as applied across the entire surface of the object. It is my sense that many of those who react negatively to Louboutin’s claim may do so because there is something offensive about obtaining a narrow right and using it as a club to stop conduct that is far beyond the narrow obtained right. It’s the classic concern about the tail wagging the dog.

Let’s explore a few other real-world examples to test my approach.

Gillette owns federally-registered rights in not only THE COPPERTOP BATTERY word mark, but also the trade dress depicting a band of copper-tinted color across the top of their batteries. Does that right extend to batteries or battery covers having a copper color across the entire surface of the article? I don’t think so. Apple apparently agrees.

 

What about the GOLDTOE sock brand? Does owning a federally-registered color/placement mark provide rights broad enough to reach use of that color across the entire surface of the article in question? Despite the federal trademark registration covering the color gold as applied to the toe portion of the sock, the marketplace tells us that anyone can sell solid gold colored socks:

GoldToe Brand Socks

 

 

 

 

 

 

 

 

 

 

 

And, what about Adidas famous three stripe design trademark? Does that permit Adidas to prevent use of stripes that cover the entirety of shoes? These examples suggest not: (1) Raben striped shoes; (2) Toms striped shoes; (3) Keds striped tennis shoes; and (4) these cool-looking striped Nike soccer shoes (interesting story on their design here):

 

What about Ked’s blue rectangle trademark device that appears on the heel of tennis shoes? Does that limited non-traditional trademark right extend protection to every shoe that also has the color blue covering the same portion of the shoe? Nike apparently did not think it needed to carve the blue out of that portion. Neither did Emerica with its solid blue shoes.

The Supreme Court in Qualitex discussed the possibility of industrial bolts with red heads serving as non-traditional trademarks. Would such a color/placement trademark forbid another from making and selling totally-red colored bolts? These guys wouldn’t think so.

Finally, Casella Wines, owner of the Yellow Tail brand, also owns a federally-registered non-traditional trademark in the “placement and combination of the color pink as placed on the top and the front of a wine bottle,” as shown in the middle bottle displayed below:

Should Susan G. Kommen be concerned about sponsoring an all-pink wine bottle in connection with fundraising for breast cancer? I’m thinking Casella Wines is not a problem, what do you think?

In the end, permitting a single-color/limited placement trademark to bar the use of that same color across the entire surface of an article, as a common form of ornamentation, would allow the (yellow) tail to wag the dog (or kangaroo), wouldn’t it?

Where do you come down on these issues?

A purely hypothetical puzzle, but I’m wondering, would Christian Louboutin have a viable trademark claim if Yves Saint Laurent sold women’s shoes in boxes bearing the above seemingly random grid of letters, each letter having equal type, style, font, color and emphasis?

For those of you who answered with a strong “of course not,” I suspect your answer must change if selected highlighting is added in a way that emphasizes the LOUBOUTIN mark, makes it clearly legible, and causes it to visually “pop” from the letter grid, as shown below:

Here is the point. In Christian Louboutin’s current trademark infringement lawsuit against Yves Saint Laurent (asserting Louboutin’s lacquered red sole trademark for women’s high fashion designer footwear), it is important to appreciate that the allegedly infringing women’s shoes at issue are monochrome red in color, meaning the entire shoe is red, each and every portion, not just the sole (which is the extent of Louboutin’s registered non-traditional single color trademark), making it very difficult to argue that the allegedly infringing Yves Saint Laurent red sole does anything other than blend into the background of their entirely red-colored shoes.

In fact, I’m left wondering whether an average consumer would even discern Louboutin’s red sole mark in Yves Saint Laurent’s monochrome red high heel shoes, anymore than they would notice the LOUBOUTIN mark in the colorless letter grid at the top of this post, or whether they would more likely and simply see a harmless sea of letters and a harmless sea of red throughout the entire shoe.

Stay tuned for some more of my thoughts on Louboutin’s lacquered red sole trademark infringement claim against Yves Saint Laurent.

In the meantime, below the jump you’ll find a depiction of the same letter grid with more highlighted words that are relevant to the current trademark battle between Louboutin and Yves Saint Laurent.

Continue Reading Louboutin Red: Blending Into the Background

–Catlan McCurdy, Attorney

If the thousands of ads I have seen over the years have taught me anything, it is that the words “Ralph Lauren” and “drug traffickers” don’t belong in the same sentence. According to ad campaigns, upon hearing “Ralph Lauren” we are instead supposed to imagine clean-shaven, chiseled young men with their equally attractive, perfectly slender, well-browed, female counterparts. Throw in Ralph Lauren himself with his shocking white hair and eccentricities (Lauren required that the new door at his house on a 13,000 acre ranch actually squeaked when opened, just like in the movies) and I’m there. And yet, Ralph Lauren polo shirts have become the new fashion craze of choice developing in Mexico, influenced by the Mexican drug lords and gangsters.

As recently reported by the Guardian, this trend first became apparent in August 2010 when Edgar Valdez Villarreal aka La Barbie (no word on whether Mattel is concerned about trademark infringement) was arrested on charges related to large scale drug trafficking, torture, and murder, while wearing a green Ralph Lauren polo and a smirk. By the way, La Barbie gets his nickname from his supposed good looks. Maybe it’s just me, but I don’t see it. Moving on.

Then in September 2010, La Barbie was photographed again, in another Ralph Lauren polo, navy blue this time (to compliment his eyes perhaps) as he was being transferred by the police. Other Mexican cartel members including, Jose Jorge Balderas Garza aka El JJ, have followed suit. El JJ was arrested for murder while wearing the same blue Ralph Lauren polo. El JJ’s Columbian supermodel girlfriend was also arrested in connection with the same murder, so at least he is living up to the image of having a beautiful woman by his side.

Flash forward a year (the typical time for looks to leave the runway and hit the streets), and Mexican youths have been buying similar Ralph Lauren polos, including knock-offs, at an alarming rate in order to “look like the bad guys.” What does this mean for Ralph Lauren when their shirts have become the uniform of choice for criminals?

To me, this news story exemplifies the fact that brand management is sometimes uncontrollable. Ralph Lauren can’t stop Mexican drug cartel members from wearing their shirts at inopportune times, such as a public arrests, and they certainly can’t prevent the fad from continuing among the Mexican youth. As blogged by David Mitchel on here, brands in the past have attempted to distance themselves from certain activities they deem out of touch with their image, and with what success? Ja Rule still wears Burberry. As of now, Ralph Lauren has declined to comment on their new customer base, and if I were a betting woman (which I am), I would be inclined to bet that the company will continue to remain silent, lest they be called elitist.