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.

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?

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 . . . .

–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.

When I snapped this photo over a month ago in Las Vegas, I figured it wouldn’t be much longer before we hear from the Second Circuit Court of Appeals in the Christian Louboutin v. Yves Saint Laurent red sole trademark infringement case.

Trademark types are anxiously waiting to hear whether the district court’s denial of Louboutin’s requested preliminary injunction against YSL’s monochrome red shoes will be overturned (hard to imagine at this late date) and whether the district judge’s skepticism about single color trademark ownership in the fashion industry will be rejected (much easier to imagine at this late date).

British Vogue is keeping up to the minute on the dialogue between the parties through their comments to the media. And, back in October 2011, Fashionista reported that a decision from the Second Circuit was expected in early Spring 2012 “if not earlier.” So, what is taking so long?

When the snow is gone in Minnesota and most of us have mowed our green lawns in the Twin Cities at least once so far, it’s at least early Spring.

Besides, we’ve already provided the appropriate road map, here and here.

Other possible road maps can be found here.

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