The popular UGG® branded sheepskin boots are at the heart of a dispute in the Northern District of Illinois. Deckers Outdoor Corp. (“Deckers”) owns 29 federal registrations for the trademark UGG in connection with numerous goods and services, including footwear, clothing, wallets, passport covers, plush toys and retail store services. The company also has four pending applications for UGG to add to this family of UGG trademarks.

Deckers sued Australian Leather Pty. Ltd. and its owner (“Australian Leather”) for trademark infringement and patent infringement for selling “ugg” boots.

UGG® branded boots have become very popular. Fashion forward celebrities, such as Blake Lively and Sarah Jessica Parker, are often pictured wearing the comfortable boots as they go about their daily lives. This provides the brand with free publicity and even more exposure.

Defendant Australian Leather alleged that the ugg mark was generic for sheepskin boots and that the doctrine of foreign-equivalents supported this conclusion. The parties brought cross motions for summary judgment on these issues and others.

Steve Baird has written about trademark genericide before on DuetsBlog. Generic trademarks are those where a brand name has become synonymous with a general class of product or service. Famous examples include: aspirin (Bayer lost this valuable mark), elevator and linoleum. Losing a trademark to genericide allows competitors to benefit from the originating company’s goodwill without being guilty of trademark infringement. Companies have undertaken advertising campaigns to prevent or combat their trademarks from becoming generic. For example, the Velcro Companies came up with the hilarious video, “Don’t Say Velcro,” explaining that the product is a “hook and loop” with the brand name VELCRO®. The company even came up with a sequel video called “Thank You For Your Feedback” that Steve Baird wrote about previously on DuetsBlog.

Luckily for Deckers, the Illinois Court found that its UGG® trademark was not generic. Deckers introduced a survey undertaken in 2017 in the United States of 600 women between the ages of 16 and 54 wherein 98% of the respondents viewed UGG® as a brand name. These results were even better than past surveys commissioned by Deckers in 2004 where 58% of the respondents viewed the mark as a brand, and in 2011 where 89% of respondents viewed UGG® as a brand name.

In turn, Australian Leather asserted that “ugg” was generic among American surfers in the 1970s. The Court found this group to be too narrow. Australian Leather also introduced evidence of “ugg” being generic for sheepskin boots in Australia. Not surprisingly, the Court did not find this evidence to win the day. The Court noted that genericness in another country could be at least relevant to consumer perceptions in the United States. However, it is important to remember that whether a trademark is generic in another country has little bearing on whether it is generic in the United States. Trademark rights are territorial. Having a registered trademark in the United States does not give a company rights in that mark in Australia or other countries.

The Court explained that the foreign-equivalents doctrine did not warrant another result. It explained that “the doctrine is not a perfect fit for English to English [terms, rather, the doctrine] is generally used to analyze non-English terms used in the American marketplace.” Steve Baird did a nice job of explaining the appropriate use of this doctrine in his post, here.

What genericide stories have you heard about?  It can be an ongoing and costly battle for brand owners to protect their valuable intellectual property rights.

Normally when we talk about stripes trademarks , we’re talking about iconic sportswear brand adidas. An avid litigant with respect to use of “three stripe” designs on footwear and clothing, adidas is a regular feature here at DuetsBlog, where we have discussed disputes with lululemon, Puma, and retail store Forever 21. But today we’re talking about a different three stripe brand, the blue-red-blue and green-red-green three stripe designs featured by luxury brand Gucci. Not everything is new though. Gucci’s foil in this dispute is no stranger to stripe-infringement claims, as our friend Forever 21 makes another appearance.

Over the past year, Gucci sent cease and desist letters to Forever 21 regarding the sale of clothing and accessories featuring a familiar striped pattern. Following an exchange of letters, Forever 21 struck first, filing a complaint requesting declaratory judgment that its sale of the products does not infringe Gucci’s rights, and requesting that the court cancel Gucci’s registrations on the grounds of lack of secondary meaning and/or genericness. In its answer, Gucci asserted claims of trademark infringement, trademark dilution, and unfair competition. Excerpts from Gucci’s answer displaying the clothing at issue are shown below (with additional examples here and here). 

 

In its answer, Gucci only addressed Forever 21’s non-infringement count. Prior to filing the answer, Gucci filed a Motion to Dismiss all the claims related to cancellation of Gucci’s registrations. On Monday November 6, the District Court issued an order granting the motion, providing Forever 21 with 10 days to file an amended complaint.  In the order, the court suggests that Forever 21 may have an uphill battle in pursuing these claims, stating

[T]he court is skeptical that plaintiff has sufficiently alleged facts to support its claims for cancellation based on lack of secondary meaning, aesthetic functionality, and genericism.

So while I’d love to get into the substance of whether Forever 21 has a chance at cancelling these “three-stripe” registrations, we’ll have to see whether Forever 21 is able to craft an amended complaint to overcome the court’s concerns. In the interim, I’m left considering Gucci’s three stripe marks alongside adidas’ three stripe marks. In reviewing each parties’ registrations, an interesting detail emerges. Both parties own registrations for stripe designs associated with clothing, but that doesn’t mean both parties have the same type of registered rights.

For adidas, it registered its stripes as trade dress for its products. For example, Reg. No. 3,029,127 describes the registered mark as “three parallel stripes running along the sleeve of a shirt, t-shirt, sweatshirt, jacket or coat.” The drawing of the mark is shown below.

Clearly, adidas’ registrations is specifically for a stripe patterned applied to jackets.

Gucci’s registered rights? Not so much. Based on the registrations identified in Gucci’s answer and counterclaim, none of Gucci’s registrations cover trade dress. All of the registrations instead appear to be for an image of stripes. The descriptions for Gucci’s marks are all similar to Reg. No. 4,379,039, which describes the mark as “a stripe containing three distinct bands of color with a red band in the middle of two green band.” The drawing for the registrations is simply a square with three stripes.

Does Gucci’s failure to register its mark as trade dress affect Forever 21’s ability to cancel the registrations for these design logos? Normally use as a trademark is on a tag, label, on the pocket, or emblazoned across the shirt. If Gucci’s actual use of the registered mark is limited solely to the trade dress along the bottom or cuffs of jackets, does it open up any potential claims for cancellation based on non-use? Does Gucci’s failure to register its mark as trade dress affect Gucci’s ability to assert that Forever 21 is infringing a federally registered trademark? I guess we’ll find out whether Forever 21 wades into these waters when (or if) it files its amended complaint. Stay tuned.

 

Plaintiff LVL XIII Brands Inc. (“LVL XIII”) must not have heard of the old saying:  “Never strike a king unless you are sure you shall kill him.”  The New York start-up sneaker company decided to take on fashion king Louis Vuitton over a metal plate attached to high-end men’s sneakers.  LVL XIII’s claims were dismissed last week on summary judgment in a 107 page opinion.
uuduy

Hopefully, Plaintiff LVL XIII fared better last week with its presentation during New York Fashion Week show pictured above.  You may have heard of LVL XIII sneakers, because famous people such as Jason Derulo and Chris Brown have touted the sneakers on television and in magazines.

In the lawsuit, Plaintiff alleged that Louis Vuitton was engaged in trademark infringement and unfair competition by using its rectangular metal toe plate.  Examples of the toe plates at the heart of the dispute are depicted below.hjkyudu

The Court began its analysis of the motion for summary judgment by explaining that for a trademark to have protection, it must be “distinctive.”  An “inherently distinctive” trademark is one in which “intrinsic nature serves to identify a particular source.”  Plaintiff’s mark did not meet this standard.  Accordingly, the Court had to turn to whether the mark had “acquired distinctiveness” by achieving “secondary meaning” among the relevant consumers.  This means that “in the minds of the public, the primary significance of a product feature is to identify the source (e.g., LVL XIII) rather than the product itself (e.g. the sneaker toe patch). Continue Reading Trendy Shoemaker Cannot Slay the Fashion King

– Jason Voiovich, Chief Customer Officer, Logic PD

It’s not a new reality show. Let’s take that off the table straight away. That said, one could be forgiven this year (of all years) for imagining a scenario in which retired basketball great Kobe Bryant teamed up with not-so-retired real estate sort-of great Donald Trump to launch original programming on a new Netflix platform. Heck, I’d watch it.

But alas, it is not meant to be.

Black Mamba, Make America Great Again, and Netflix Fast are all trademarks, recently (and not so recently) filed by their respective owners, staking a claim to a piece of intellectual real estate. But I’ll bet you figured that part out already. What may not be so obvious is when they were filed. It’s the when that gives us a tiny open window into the future plans of these organizations. In other words, these trademarks are an example of potential competitive intelligence. But only if we use them.

Let’s have a brief look at each one.

BLACK MAMBA

In April of this year, Kobe Bryant made important news.

Kobe Bryant’s final game with the LA Lakers saw him torch the Utah Jazz with 60 individual points. It was a fitting end to a dominant career that included five NBA Championships, two Olympic Gold Medals, 18 All Star Selections, one NBA MVP award and nearly 34,000 points scored.

That wasn’t the important news.

Bryant’s retirement was no surprise. Although he could be dominant at times, at 37, he could no longer put the LA Lakers in a position to contend for a playoff spot through sheer force of will.

The big news for Bryant was the registration of the “Black Mamba” trademark in May – a nickname he has used for several years, including in some Nike advertisements. But Black Mamba had never been trademarked. Barring opposition, Bryant will own a distinctive piece of intellectual real estate for use in a variety of applications including shoes and apparel. Effectively exploiting this trademark, much in the same way Michael Jordan does with Nike and the “Air Jordan” trademark, not only secures Bryant’s future, but also changes the fashion apparel landscape.

I wonder how many other apparel manufacturers were monitoring the US Patent and Trademark Office for new submissions and found this one? Could it give them advance notice on an intent to market goods and services? Might they try to oppose it? Might they counter Bryant’s now-obvious strategy with deals of their own to preempt him in the market?

Adidas/Reebok, Under Armour and the like are pretty sharp. I’m guessing they’re on top of it.

Here’s my question: Are you aware of your competitors next major brand campaign?

MAKE AMERICA GREAT AGAIN

As if this political campaign weren’t interesting enough, The Donald has managed to show he’s crazy like a fox. Well before the trademark “Make America Great Again” made its appearance on baseball caps in this presidential election cycle, Donald Trump laid claim to the abandoned Reagan-era phrase.

How long before?

Here’s where it gets really interesting. Trump filed for registration on November 19, 2012, not two weeks after Barack Obama defeated Mitt Romney, winning a second term in the White House. (Trump later updated the filing to include apparel and other uses in 2015).

Curious timing? I don’t think so. It seems very clear to me that Donald Trump had been planting the seeds of a political campaign well in advance of anyone actively paying attention. How different might the political landscape look today if the RNC had paid attention to Trump’s USPTO filings? Would the DNC have begun to assemble a counter-strategy? Could Trump have been blocked?

Perhaps not, but the reality is, they probably weren’t looking at all.

My question again: Have your competitors given you a glimpse into their future, and what are you doing about it?

NETFLIX FAST

There are lots of Internet Service Provider (ISP) speed test sites. (My personal favorite is Speedtest.net by Ookla. I use it when I want to more effectively complain about slow CenturyLink service at home.) On the surface, Netflix starting a speed test service of their own seems iterative and silly.

But it’s not.

You may not realize it, but Netflix (and streaming services like it, but especially Netflix) is one of the biggest bandwidth hogs on the internet. You had better believe the major ISPs realize it. The whole “net neutrality” argument last year was prompted, in part, on the disproportionate toll streaming video services take on connectivity infrastructure.

The fervor may have died down in the public sphere, but the filing of the Netflix Fast trademark is a signal that the company is planning a more active role in the creation of the public narrative. One of the key parts of that narrative is access to their own data on network choke points. They will be able to use that data to effectively partner with local providers to enhance service. Or they might be able to counter the narrative that Netflix is clogging the pipe. Or both.

Are the ISPs and Telcos watching this announcement? Are they thinking ahead? Are they coming up with their own list of possible scenarios? Perhaps.

My question again: Which one of your competitors has telegraphed their public affairs strategy with a trademark filing?

YOU SHOULD BE DOING THIS

I’m admittedly using some big name examples here, so it’s easy to make the case that competitors have the resources and scale to sense and detect these types of threats. But that shouldn’t let us off the hook. In my experience, even small to mid-sized companies can take advantage of low-cost and no-cost competitive intelligence techniques to dramatically improve their early warning systems. The same logic applies to patent scanning, although I find that innovation-driven organizations keep pretty good tabs on the weekly Official Gazette for Patents published by the USPTO.

But in some ways, I think trademark scanning is even more immediately valuable. First, trademarks can be put into the field much faster than patents in the form of marketing and advertising campaigns. That means you have a much shorter window of time to react and adapt. Second, while many organizations may file dozens of patents looking to cover their bases in a number of areas (and possibly monetize their portfolio at some later point), the same really isn’t true for trademarks. You get ‘em to use ‘em. In other words, when you see a trademark filing, odds are that your competitor will be taking advantage of it soon. Finally, while patents are the primary domain of technology-driven organizations, trademarks are useful to every type of organization. You could argue to me that your service organization doesn’t need to monitor the patent gazette, but you can’t argue trademarks won’t impact you.

Bottom line: Using trademarks for competitive intelligence is easy and cheap. You should be doing it.

– Nancy Friedman, Wordworking

In mid-June JetBlue, which since its first flights in 2000 had been a single-class “value” airline, introduced its version of first-class service. To signal this departure—forgive the pun—it didn’t give the service a category name such as JetBlue Business. Nor did it follow its own naming conventions and build on the parent name, as with TrueBlue, the airline’s rewards program. Instead it chose a metaphorical, one-word route and named the new “premium coast-to-coast experience” Mint. The logo is a stylized mint leaf; the web copy and press release are full of minty wordplay—refresh-mint, entertain-mint, Mintroducing.

JetBlue isn’t the first or only airline to pick a name from the produce aisle. Last year, AirAsia Japan rebranded as Vanilla Air, a name intended to convey purity and innocence as well as “emotional excitement.” In 2011, a new budget airline called Peach made its debut, also in Japan. SpiceJet operates domestic and international flights from India; Mango is a state-owned South African budget carrier.

These botanical names are miles away, stylistically and semantically, from traditional airline names, which were derived from their origin (Delta, Alaska, Air France), their range (Pan American, Trans World, Southwest), or their pedigree (KLM is the Dutch initialism for Royal Dutch Air; Lufthansa combines the German words for “air” and “Hanseatic League,” the confederation of Northern European merchant guilds that formed in the late Middle Ages).

Old-style airline names, in other words, told passengers where they were going. The new, evocative names tell passengers how the journey will feel.

The shift actually began three decades ago, with Virgin Atlantic (and later Virgin America). An airline whose name suggested inexperience? Shocking! The very boldness of the name said “We’re completely different from the competition.” JetBlue’s name, while less cheeky, also signals a break with convention and an appeal to the senses; “blue” connotes sky and serenity rather than a specific point on the map.

It’s probably not a coincidence that as airline names have evolved to be more playful and appetizing, most people’s experience of air travel has become the opposite: long, grim lines; manhandling by security agents; shrinking cabin space; surcharges for “amenities” that used to be standard features. The names, by contrast, are the verbal equivalent of air freshener. Inhale that Mint aroma! Take a whiff of Vanilla!

It isn’t only the airline industry that’s finding names in the farmers’ market. Earlier this year ING Direct, which had been bought by Canada’s Scotiabank in 2012, rebranded as Tangerine. (The new name was developed by Sausalito, California, branding agency Lexicon, which has some experience with out-of-context fruit: in 1998 it developed the BlackBerry name.) Southern California–based TomatoBank, which serves wealthy Chinese immigrants, has a red tomato logo. When TomatoBank’s chairman changed the name from InterBusiness Bank in 2006, he explained the decision thus: “It is an attractive brand name that brings to mind images of growth, multi-culture and health, all characteristics that represent who we are and what we strive to achieve. But most importantly, it is a brand that is recognizable and hard to forget. If there can be an Apple Computer—why not a TomatoBank? Try to forget it. You can’t!”

And there’s a veritable orchard of “plum” names: American Express’s deep-purple Plum card; the RedPlum shopping-coupon company; Plum, a magazine for pregnant women over 35; and Freshplum, which enables online retailers to offer exclusive discounts to customers.

Fruity, evocative names have long been commonplace in style-driven industries. Think of the non-airline Mango, a global chain of fashion boutiques; or Juicy Couture, the upscale casual-wear brand. And a stroll through a paint store can make you downright hungry: right now I’m looking at color chips labeled Pineapple, Cool Cucumber, Crème Caramel, Cake Crumbs, Almond Sugar, and Banana Split.

But unlike fashion and home décor, air travel and banking long ago stopped seeming glamorous or gracious. Names like Mint, Tangerine, and Plum represent attempts to bring the fun back. By making ordinary or anxiety-producing activities seem yummy—and even exotic—the new fruit names distract us, tempt us, and fill our brains with appetizing sensory associations.

Is it too much to hope that the brands behind those names will deliver on those tasty promises?

Tim’s post last week on the dispute between Victoria’s Secret PINK (a women’s lingerie and loungewear line) & Thomas Pink (predominantly known for its menswear line) reminded me of a Women’s Wear Daily article that I read regarding a trademark dispute involving Kate Spade New York’s new KATE SPADE SATURDAY brand, a more casual womenswear line.

Saturdays Surf NYC was not so thrilled with that launch.  Saturdays Surf NYC is a menswear company that sells casual-wear and surfboards (surfboards…how do you get a surfboard home on the subway in New York?).  The company has a federal trademark registration for SATURDAYS SURF NYC for, among other goods and services, “clothing, namely, t-shirts, collared shirts, sweaters, sweatshirts, hooded sweatshirts, jackets, shorts, pants, slacks, trousers, swimwear, gloves, scarves, socks, and shoes” and “retail and on-line retail store services featuring clothing, clothing accessories, personal grooming products, coffee, and artwork.”  Notably, none of these goods or services are limited to clothing for men.

The  all caps stylization in a sans serif font of the Saturdays Surf NYC logo is also remarkably similar to the Kate Spade Saturday logo.  In addition both SATURDAY or SATURDAYS appear in a larger font size relative to the other words in both logos.

Kate Spade filed a complaint in the Southern District of New York seeking a declaratory judgment that its mark KATE SPADE SATURDAY did not infringe on SATURDAYS SURF NYC.  Despite evidence of some actual confusion (SATURDAYS SURF NYC clothes being returned to Kate Spade and vice versa) and evidence that Saturdays Surf NYC carries items in smaller sizes that women purchase (but unlike Kate Spade not designed for women), the court found for Kate Spade.   In concluding that Kate Spade’s mark indeed did not infringe Saturdays Surf NYC, the judge wrote:

I am particularly persuaded by the relative weakness of the word that the two marks share, the significant distance between the men’s and women’s products, and the consistent inclusion of the famous house mark, Kate Spade, in its Kate Spade Saturday mark.

Perhaps if it were JACK SPADE SATURDAY (a menswear line related to Kate Spade New York), the decision might be different.  Relying on a case from 1979, the Kate Spade court stated that there is “significant competitive distance” between the two lines based on the fact that one’s products are designed for men and the other’s products are designed for women.  Nearly 35 years later, do you think that’s true for fashion now or, as society has changed, do you think that competitive distance between men’s design and women’s design has been minimized?

Based on this Kate Spade decision, the outcome in the PINK dispute may be more favorable for Victoria’s Secret, given the seemingly greater weakness of PINK for apparel and the differences between the products, and assuming consistent inclusion of their famous house mark Victoria’s Secret.

Since May of 2013, a legal battle has been brewing between two fashion industry giants: Victoria’s Secret and Thomas Pink (owned by Louis Vuitton). Below are pictures of storefronts for the two companies:

Thomas Pink began as a U.K. company and is known for its menswear, primarily shirts, ties, and other dress clothes. Thomas Pink is the owner of U.S. registrations for the THOMAS PINK and PINK THOMAS PINK JERMYN STREET and Design marks, and claims to have begun using the mark as early as 1984.

Victoria’s Secret is a U.S. company that sells women’s clothing exclusively, and is most recognized for its line of lingerie and undwear. In 2001, Victoria’s Secret began selling women’s clothing under a line called PINK or VICTORIA’S SECRET PINK targeted toward college aged women. Victoria’s Secret owners numerous U.S. registrations for PINK-based marks for use on clothing, including VICTORIA’S SECRET PINK, PINK U, LIFE IS PINK, FOREVER PINK, and more.

Last May, Thomas Pink filed a trademark infringement action in the U.K. In response, Victoria’s Secret filed a declaratory judgment action in the United States on July 24, 2013. Normally, this would be a pretty straight forward case of infringement. The goods are nearly identical, as both Victoria’s Secret and Thomas Pink sell women’s clothing (although it doesn’t appear that Thomas Pink sells lingerie). Thomas Pink likely has priority as they claim use of the mark back to 1984 for clothing and 1997 for retail store services.

The only real issue is where there is a likelihood of confusion between the marks. This seems like a pretty tough case for Victoria’s Secret. PINK appears to be the dominant portion of the mark and Victoria’s Secret has adopted this as its companion store name. If I were to start a clothing company, drop the TOMMY and begin selling clothing under the brand HILFIGER, well, let’s say I wouldn’t like my chances. Should it be different here when the dominant portion is PINK instead?

Just last year we received some guidance in the Louboutin decision as to whether colors themselves can serve as trademarks in the fashion industry. But what about the standard character representation of a color? Does that limit the scope of protection for THOMAS PINK? There are a great number of U.S. registrations for marks for clothing incorporating the term PINK, including: ELECTRIC PINK, PINK OPS, PINK STUFF, PINK REPUBLIC, PINK MEMORIES, U.S. PINK, TEAM PINK, PARKER PINK, Under Armour’s POWER IN PINK and also Ralph Lauren’s PINK PONY:

With all of these registrations, it may be difficult for Thomas Pink to claim rights to PINK standing alone. There are at least two registrations that have disclaimers of the term PINK. Given all the foregoing, it will be interesting to see how much protection courts will give to the THOMAS PINK mark.

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?

–Catlan McCurdy, Attorney

Above, my favorite latest designer ripoff – the Kate Middleton wedding dress. A cheaper version of the Alexander McQueen designer’s, Sara Burton, vision, so now every bride can feel like a princess… (photo credit to Mirror.co.uk)

With New York Fashion Week nearing its end, and the whirl of Forever 21’s sewing machines beginning to hum, I couldn’t help but think about where on earth that little piece of legislation called the Innovative Design Protection and Piracy Prevention Act (“IDPPPA”) had wandered off to now. Answer: not very far.

Let me take a step back. The IDPPPA aka The Fashion Bill was reintroduced into Congress in July of this year, but legislation attempting to protect fashion designs has been around since at least 2006, when H.R. 5055 was introduced. The IDPPPA, if passed, would amend the Copyright Act to create special protection for fashion designs, but not full-on-all-the-way copyright protection (currently, copyright protection extends for the life of the author plus 70 years). Instead, the IDPPPA would provide for a three-year term of protection for original elements or arrangements of fashion designs. Those elements must be a result of the designer’s “own creative endeavors” and “provide a unique, distinguishable, non-trivial and non-utilitarian variation over prior designs.” We’re talking about real innovation here, like the chain inside the hem Chanel suits (to ensure that the jacket hung properly from your shoulders), the Diane Von Furstenberg wrap dress (copied by millions now, but this dress was invented by DVF in the 1970s), or the ever iconic Burberry trench coat.

The IDPPPA includes three exceptions to infringement, but my favorite is the “Home Sewing Exception.” Under this exception, if a fashion design is produced as a single copy “for personal use or for the use of an immediate family member, if that copy is not offered for sale or use in trade” during the three-year protection period, then there is no infringement. You want to figure out how to hand-sew your own leather messenger bag instead of buying the knockoff at Target, go for it. That’s not infringement.

A previous Senate version in 2010, under the same name, was approved by the Senate Committee on the Judiciary for the bill to proceed to the Senate floor, but it did not pass the floor. The most recent House bill IDPPPA was referred to the Subcommittee on Intellectual Property, Competition and the Internet on August 25, 2011. It might even be possible for this to be passed in time for the next fashion week in February, giving designers, especially small ones like Proenza Schouler, a fighting chance against blatant copy-cats.

–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.