–Catlan McCurdy, Attorney
When I moved to Minneapolis four years ago, I mentioned in passing that there was a noticeable lack of Wal-Marts in the suburbs surrounding the Twin Cities. I don’t have a particular affinity for shopping at Wal-Mart, it was just a casual observation. Still, the friends I was with at the time
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
For those of you who frequent DuetsBlog, you’ll know that color trademarks are a common topic of discussion. Steve Baird posted an excellent and thought provoking post just recently discussing Louboutin’s efforts to litigate the boundaries of its rights in the color red. It is generally accepted that color trademarks can receive protection upon obtaining
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
The strategic use of color can make all the difference in the world — particularly the trademark world — when creating the visual identity for a brand, as color can be a very helpful legal tool in communicating the brand’s underlying meaning.
And the meaning of a brand and its trademark, or a portion of its trademark, can have many legal implications, including but not limited to whether the mark is descriptive or suggestive, strong or weak, inherently distinctive or not, whether a disclaimer might be required, whether or not a likelihood of confusion exists, and whether or not there is a valid fair use defense.
Especially when a brand name is composed of compressed or telescoped words, the intended meaning behind a brand name can be lost on consumers without the careful use of color combinations:
Without the benefit of the colored-version of the current PETSMART logo on the left, how would word-of-mouth discussions regarding the brand go, if all one had access to was the black/white version on the right? Would the PETSMART brand name be pronounced as PET SMART, PETS MART, or PETS SMART (the last option being the telescoped version where the compressed mark shares a letter between the two words that form it)? Would the bouncing ball punctuation alone be enough to steer the meaning toward PET SMART and away from the descriptive PETS MART?
The answers to these questions have important legal implications since PETS MART is likely descriptive, weak, and susceptible to the fair use defense, while PET SMART or PETS SMART is likely suggestive, strong, and less susceptible to fair use. So, when the words are compressed, and spacing cannot answer these critical questions, there is a strong legal incentive to clarify for consumers that the elements of the compound mark are PET SMART, not PETS MART, as the coloring shown above accomplishes.
To be sure, the smart use of color is not the only tool available to influence the meaning of a compound word mark. Upper and lower case lettering can help convey valuable information as well. Staying with the PETSMART example, there was a time when the brand’s visual identity looked like this on the company’s website:
Because all the lettering in this depiction of the visual identity is the same color, the smaller size of the "s" between PET and MART probably create a pretty strong argument that the compound mark is PetsMart, not PetSmart. Interestingly, an even earlier treatment of the logo uses the red/blue color combination to communicate the PET SMART meaning, but it is somewhat visually contradicted by the diminutive appearance of the MART element, as shown here.
So, who do you suppose had more influence on the various transitions of the PETSMART logo over time, legal or marketing?
Finally, for a stroll down memory lane on Duets with a couple of other posts from the past, relating to visual identity, see below the jump.Continue Reading When a Brand’s Visual Identity Has Serious Trademark Implications
–Catlan McCurdy, Attorney
Another fashion icon has joined the ongoing trademark dispute between Yves Saint Laurent and Louboutin, and despite the fact that many of its goods are very small, the company is actually quite a giant. Tiffany and Company.
Yes, Tiffany. We’ve all been waiting for the company’s two amicus cents to be
–Catlan McCurdy, Attorney
A few weeks ago, I found myself at the Mall of America, or MOA, as Minnesotans fondly refer to the great shopping mecca. Clutching my coffee and walking as briskly as possible to the destinations of my choice, I had one goal in mind, which I infer is the goal of anyone
There aren’t too many things I enjoy more than speaking about the legal implications of branding.
Our friends at BlackCoffee captured a talk I gave to a group of marketing types a while back, on black and white film (thank goodness), and they have graciously posted a 34 minute excerpt, here.
Some of the topics
Best Buy was the subject of some intense criticism at the end of last week when Chris Morran of The Consumerist Blog and Mike Masnick of the Techdirt Blog took Best Buy to task and Mike went so far as to label Best Buy a “trademark bully” for sending a cease and desist letter to
In the midst of all our discussion about “trademark bullying,” I couldn’t resist picking up this “No Bull” postcard from Manny’s Steakhouse in Minneapolis, Minnesota.
You may recall Dan previously wrote about Manny’s promoting similar images with the phrase “One Helluva Sac Lunch”. Dan also noted the irony of the best beef coming
