Louboutin thinks its registered red outsole trademark does not adversely affect competition but I see how it could stifle fashion if others jump on the color claiming.
Catch up:
- Related posts:
- Seeing Red? Louboutin loses the first battle but will he win the war?
- Are we seeing too much red?
- Louboutin's court loss can be his gain
- Lesson:
- An approved trademark application does not always make for a valid trademark.
Recap:
- The International Trademark Association (INTA) filed an amicus brief addressing only Court's "errors" with respect to its analysis of the trademark's validity
- YSL filed an appellate brief, arguing that Tiffany and INTA mischaracterize the District Court's opinion as a "per se ban" on single color trademarks in the fashion industry. YSL states that the District Court made only a preliminary finding that Louboutin is "unlikely to be able to prove" that its mark is entitled to protection.
- -I think this may have been a defensive move on YSL's part hoping to not get Tiffany and its lawyers working with Louboutin. But aside from Tiffany's trademarked color interest, Tiffany's lawyers were the ones who helped Louboutin file for its red outsole trademark.
- Law professors filed an amicus brief in support of YSL
10 January 2012: Louboutin filed a brief, arguing
- The Court erred by misconstruing the red outsole mark, ignoring the statutory presumption of validity, and ignoring the burden of proof
- The Court erred by misapplying the tests for functionality and aesthetic functionality
- Louboutin demonstrated that it is entitled to a preliminary injunction because it had shown that:
- its red outsole mark acquired secondary meaning
- its red outsole mark is strong
- its red outsole mark is neither functional under the traditional test nor aesthetically functional
- there is a likelihood of confusion
- the red outsole mark is famous
- YSL is not likely to succeed on its fair use defense
If you are near the US Court of Appeals for the Second Circuit, in NY, you should go check out the shoe saga in person and report back here ;)
On that note... it is quite gangster bold of YSL to release another shoe with red outsoles while Louboutin is on their back.
Although I do not think that a trademark (especially one used by others before the trademark seeker) should be held valid, I think Louboutin is doing the right thing by fighting. Policing your trademark helps prevent genericide.* If you do not actively protect against unauthorized use, this inaction can and will be used against you.
I hope this case gets done quickly so Louboutin can refocus its fight on brand protection. Below is an image of a bulldozer destroying seized counterfeit Louboutins.
Source: stopfakelouboutin.com via Fashion on Pinterest
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*Genericide is when a mark (logo, slogan, sign, geographic indicator, etc.) becomes generic. Allowing unauthorized use of your trademark and the public expropriating your term equals trademark suicide.
