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?

Let’s suppose you’ve been asked to search and clear the name of a bar, without seeing the design mark in the upper right and lower left hand corners of this photo (from a recent trip to Boston):

When I first saw this design logo, I thought the name was probably W Bar, so you know where my mind went next, right?

Not there, but here, yes, I was thinking Alpha Watch again.

But then, I second-guessed myself and started seeing M Bar, still with Alpha Watch on my mind.

Next, I really started questioning my focus on single letter marks, seeing instead Un Bar, then Hi Bar (without the dot in the i).

What have you seen that I didn’t, as a possible bar name? If you’re familiar with Boylston Street in Boston, you’re disqualified from answering.

Back to your assignment now — the point is, had you merely been asked to search and clear M Bar as a name and mark, it is best to see how it actually will appear to potential consumers.

Curious cursive lettering or script can appear to be or mean different things to different people.

So, while the potential scope of rights in the resulting visual identity of the brand may be quite broad if cleared for use, the significant challenge during clearance and due diligence is to make sure the multitude of possible meanings have been considered as part of the search strategy.