Thrifty fashionistas are painting their shoe soles red… (imitating Louboutin while a lawsuit defending his red-sole trademark is on appeal) Reply

IMG_0176While the lawsuit filed by shoe designer Louboutin against fashion house Yves Saint Laurent alleging infringement of his signature (and trademarked) red-sole is being appealed… a surge of thrifty fashionistas have begun painting the soles of their shoes red to imitate the designer look.

Evidently sales of glossy red paint have rocketed in the UK … increasing by 40% for the red shades such as “Flame” and “Show Stopper.” Paint shop keepers are giving tips for painting on leather… and are surprised and happy about this new trend… and spike in red paint sales.

Interestingly, taking a brush in hand and painting shoe soles is exactly how the designer Louboutin claims to have created his first pair of red soles too.

“In 1992 I incorporated the red sole into the design of my shoes. This happened by accident as I felt that the shoes lacked energy so I applied red nail polish to the sold of a shoe. This was such a success that it became a permanent fixture…. I selected the color red because it is engaging, flirtatious, memorable and the color of passion. It attracts men to the women who wear my shoes. The red-soled shoes were an immediate sensation, and clients specifically came in to my stores looking for my red-soled shoes. The red sole quickly became my signature.” – excerpt from a declaration made my Christian Louboutin, in support of the trademark application for his red-sole-design mark

Celebrities and famous actresses are often seen wearing Louboutin shoes which sell for $450 – $4,645 a pair, on the Barney’s website… which is a significant footwear investment.  By comparison, the thrifty fashionistas who are taking a paint brush in hand and painting their soles red… are spending a few dollars on tester-sized pots of red paint.

For more information: The case is Louboutin v. Yves Saint Laurent America, 11- 3303, U.S. Court of Appealsfor the Second Circuit (Manhattan) [click here for Louboutin’s brief and YSL’s brief and Judge Marrero’s 8/10/11 Decision: http://www.nylj.com/nylawyer/adgifs/decisions/081111marrero.pdf]; Red Sole USPTO Registration # 3361597; http://fashion.telegraph.co.uk/news-features/TMG9389255/Cash-strapped-women-are-painting-their-shoe-soles-red-to-get-the-Louboutin-look-for-less.html; http://www.huffingtonpost.com/2012/07/10/louboutin-shoes-red-soles_n_1662364.html; @iplegalfreebies and www.kasterlegal.com.

BY: Vanessa Kaster, Esq., LL.M.

vk@kasterlegal.com

 

Franklin & Marshall – Trademark infringement becomes a creative alliance between a small US college and a hot European Brand Reply

If you are traveling in Europe this summer, you are likely to see a lot of young people wearing collegiate styled Franklin & Marshall shirts and clothing… and you might wonder how the small Franklin & Marshall College in Pennsylvania has generated such a following abroad.

THE ANSWER: it’s because of a creative trademark deal.  After a pair of Italian designers were inspired by a Franklin & Marshall College sweatshirt… they created and launched an Italian brand based on the “American varsity style” and started selling a clothing line using the Franklin & Marshall name.  Since Franklin & Marshall is a registered trademark in the US, the College could potentially have a trademark infringement claim against the brand including a challenge to the brand’s domain name (www.franklinandmarshall.com) which infringes on the College’s trademarks.  (Franklin & Marshall College has three USPTO trademark registrations that incorporate the college’s name “Franklin & Marshall” – USPTO Registration Numbers: 2739509, 3536380, 2812109)

THE NEGOTIATION:  the College and the Italian brand decided to negotiate a mutually beneficial deal.  The Italian brand is able to continue selling varsity style gear abroad using the Franklin & Marshall trademarks and in return, it has 1) reportedly paid a licensing fee for use of the college’s trademarks; 2) includes information about the college on clothing hang tags; 3) made a donation to the college’s scholarship fund; and 4) allows the college to review clothing designs and ad campaigns.

With over 200 stores in Italy, the Italian, Franklin & Marshall brand can be a stylish way for the small Franklin & Marshall College in Pennsylvania to get its name out there!  (an Italian brand is just about the hippest form of marketing available!)  The clothes look great… see for yourself at http://www.franklinandmarshall.com/en/Collection/Man/Jackets.

(NOTE: Domain names that infringe a USPTO registered trademark can be challenged with a WIPO Domain Name Dispute.  See, http://www.wipo.int/amc/en/domains/.  A WIPO Domain Name Dispute is a powerful tool available to USPTO trademark owners that enables them to challenge domain names that are based anywhere in the world).

See also: A  great article by Paul Lukas at: http://espn.go.com/blog/playbook/fandom/post/_/id/2608/the-two-identities-of-franklin-marshall, http://www.fandm.edu/, www.uspto.gov, frequently asked questions about Internet Domains and WIPO domain name disputes: http://www.wipo.int/amc/en/center/faq/domains.html, @iplegalfreebies and www.kasterlegal.com.

BY: Vanessa Kaster, Esq., LL.M.

vk@kasterlegal.com

 

Tory Burch vs her Ex – a Fashionable Trademark Dispute Reply

Evidently a “fashionable” trademark dispute is brewing between Tory Burch and her Ex-husband, Christopher Burch, over the launch of his C Wonder store and brand. Gossipers are saying that C Wonder is a cheap knockoff of the Tory Burch brand… and potentially infringes Tory Burch trademarks. (gotta love trademark gossip!)

The C Wonder store is down in Soho on Spring Street and much like its website, http://www.cwonder.com/ (which features a $44 top on the homepage)… the store is filled with fun items that are much less expensive than Tory Burch merchandise. By comparison… if you click on the Tory Burch website, http://www.toryburch.com, its homepage features a $375 dress, $250 pants and a $225 cardigan.

Do these price differentials matter? Yes… price always matters… even in the evaluation of a potential trademark claim. Interestingly, the evaluation of a potential trademark claim, like this Burch/Burch issue, includes an analysis of how likely consumers are to be confused as to the source or maker of the products and the PRICE of the items factor into the analysis. Generally speaking, consumers pay more attention to what they are buying when they purchase an expensive item. (Don’t you pay more attention when making larger purchases? Would you confuse a $44 C Wonder shirt with a $225 Tory Burch shirt?)

A trademark case that exaggerates this point regarding price and consumers LACK of confusion regarding the maker of products, involves dog toys called Chewy Vuiton (made by Haute Diggity Dog) which sell for under $20 and Louis Vuitton handbags which sell for over $900. The court noted the price differential between the items in its decision which held that there was no trademark infringement in the case. (Clearly there were other obvious differences between a squeaky dog toy in the shape of a handbag and an original, Louis Vuitton bag and the court held that the Chewy Vuitons were a successful parody of the Louis Vuitton bags).

Back to a possible trademark infringement claim between the Ex-Burches… and their brands… it will be interesting to see if and how this possible trademark infringement claim develops. Currently, as far as I know, this issue is merely a murmur of frustration that has sparked trademark gossip about a possible trademark claim. Stay tuned for more on this “fashionable” trademark dispute.

See also: Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007); Jessica Pressler’s article, “His.Hers.” at http://nymag.com/fashion/12/spring/christopher-tory-burch-2012-2/; @iplegalfreebies and www.kasterlegal.com.

BY: Vanessa Kaster, Esq., LL.M.

vk@kasterlegal.com

 

Stamp of trademark approval for dripping wax seal on Maker’s Mark Bourbon 1

Did you realize that the red dripping wax seal on bottles of Makers’s Mark is a registered trademark of the brand?  Well, it is…  and the US Court of Appeals for the 6th Circuit (in Kentucky) upheld the famous trademark earlier this month.

The trademarked red dripping wax seal (US Registration No. 1370465) was challenged when tequila maker Jose Cuervo started using a similar red dripping wax seal on bottles of premium tequila.  Cuervo’s use of a red dripping wax seal prompted a lawsuit to determine the enforceability and validity of the trademarked seal.  In the case, Cuervo challenged the registration of the red dripping wax seal on the basis of “functionality.”  Interestingly, under US Trademark law, a registered mark may be found invalid if it is “functional.”  A trademark is functional “if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.”  To evaluate functionality, courts consider if  “it would be difficult or costly for competitors to design around” the mark (comparable alternatives test) or if competitors are at a significant disadvantaged by being prevented to use a red dripping wax (the effective competition test).  In this case the courts held that the registered trademark was not “functional” and as a consequence is an enforceable trademark.

(The court also considered and evaluated several other factors including: the strength of the mark; the length of time the mark had been registered, relatedness of the two parties goods, assessed similarity of the wax seals used by both parties and actual confusion).

The court held that the trademarked red dripping wax seal was enforceable.  (Also included in the court’s opinion is an impressively romantic history of Kentucky Bourbon.  Including fun facts about Maker’s Mark… for example, did you know that the red dripping wax seal was first applied using the family deep frier?)

See also the case: Maker’s Mark Distillery, Inc. v. Diageo North America, Inc. , 10-5819 (6th Cir. 2012); http://www.ca6.uscourts.gov/opinions.pdf/12a0126p-06.pdf; http://courtlistener.com; www.uspto.gov; @iplegalfreebies and www.kasterlegal.com.

BY: Vanessa Kaster, Esq., LL.M.

vk@kasterlegal.com

Come on… Coppola… don’t be a trademark bully (we love you for your movies!) Reply

You might have heard that Francis Ford Coppola and his family trust have sued a small restaurant in Novato, CA for trademark infringement over the use of the word “TAVOLA”.  THE RUB: Coppola’s restaurant Rustic (located on his winery) has a Tuesday evening dinner promoted as “A TAVOLA” and 50 miles south a small restaurant in a shopping center renamed itself “TAVOLA ITALIAN KITCHEN”.

THE PLOT THICKENS… due to Coppola’s USPTO trademark registration of “A TAVOLA” [Reg. No 4002828 for Restaurant services]. Because a trademark registration vests the owner with exclusive use of the registered mark for the designated goods and services… Coppola has a claim against the small restaurant.

BUT THE KINK IN THE PLOT… is that the dictionary definition of the Italian word A TAVOLA , as defined on Coppola’s own website, means ‘to the table’:

Meaning ‘to the table,’ a tavola is a casual dining experience …. [a] way of enjoying a meal. Like eating at your family’s home, there are no menus. Instead, our servers will come to your table offering an assortment of dishes, from the evening’s meat, poultry and fish selections to pastas, pizzas, salads and desserts.” ( at http://www.franciscoppolawinery.com/visit/dine/rustic/a-tavola)

Since a USPTO trademark registration vests exclusive use rights in trademarked terms, any trademark application should be rejected if the applied for trademark merely describes the goods or services. In this case, A TAVOLA (according to Coppola) means ‘to the table’ which is descriptive of sitting at a table for dinner. The reasoning behind this USPTO policy for not registering descriptive marks makes sense: 1) you can’t keep other folks from using regular dictionary words to describe their own products, nor 2) can you inhibit competition by owning a dictionary word.

The USPTO defines the statutory basis for refusing registration of merely descriptive trademarks on their website:

statutory basis (Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1), TMEP 1209 et seq) for refusing registration of trademarks and service marks because the proposed mark merely describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services. With regard to trademark significance, matter may be categorized along a continuum, ranging from marks that are highly distinctive to matter that is a generic name for the goods or services

The major reasons for not protecting descriptive marks are: (1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods or services; and (2) to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products. (at http://www.uspto.gov/main/glossary/index.html)

What happened here? How did Coppola get his trademark registration for A TAVOLA anyway? Don’t know. Perhaps there was ambiguity over the definition of the foreign word… although if the small restaurant can hang in there… it seems plausible that Coppola’s trademark registration could be revoked. I’m sure Coppola has his own side to the story and it does seems fishy that the small restaurant appears to have changed its name recently to include the word TAVOLA. If this is true then Coppola could claim that they are trying to appear associated with his restaurant. But the registration of a merely descriptive word as a trademark is a pretty serious no no. Undoubtedly the details are being hashed out now that a lawsuit has been filed.

If I lived close by to TAVOLA ITALIAN KITCHEN I’d go there for dinner to show my support (http://www.tavolaitaliankitchen.com/). Interestingly, they may be seeing a spike in business due to the lawsuit. The public is often keen to support the little guy in cases like this of trademark bullying.

See also: The case is Trustees of the Coppola Family Trust v. Torg Holding Corp., 12-cv-1646, U.S. District Court, Northern District of California (San Francisco); @iplegalfreebies and www.kasterlegal.com.

BY: Vanessa Kaster, Esq., LL.M.

vk@kasterlegal.com

 

ps: this post is dedicated to you Janet!!

The Naked Cowboy… wearing boots and a trademark Reply

It’s not optimal weather here in NYC today for wearing only a cowboy hat, boots, and briefs… in Times Square. But in better weather it’s likely that you have seen (or taken a picture with) the Naked Cowboy. He performs regularly in Times Square wearing only his cowboy hat, boots, briefs and a guitar. The words “Naked Cowboy” are emblazoned on the back of his briefs, on his hat and on his guitar…and the “$” is painted on his boots. Not only does he wear his brand… but he has also registered it as a trademark with the USPTO for Entertainment Services (Reg. No. 3792432). [Click here for photo]

In an attempt to challenge CBS for including a look-a-like character on their daytime show “The Bold and The Beautiful,” the Naked Cowboy sued CBS for trademark infringement. In an episode of the “The Bold and The Beautiful,” one of the characters appeared wearing only briefs, a cowboy hat, and boots while singing and playing the guitar…. and this prompted the Naked Cowboy to sue CBS. An interesting and critical detail to the lawsuit is that the words “Naked Cowboy” did not appear anywhere during the episode, the words were not on the look-a-like, nor were they spoken aloud. Nor did the look-a-like have “$” painted on his boots. Since the words “Naked Cowboy” were not used by CBS, the court held that there was no trademark infringement.

Additionally, the Naked Cowboy challenged the purchase from YouTube of adword advertising for the term “Naked Cowboy”… as well as the use of “Naked” and “Cowboy” as searching TAGS on YouTube. The court held that these actions did not violate the Naked Cowboy’s trademark because the words were not placed on any goods or containers or displayed in a way to indicate source or sponsorship.

If you were wondering if you would violate Trademark Law if you wore only a cowboy hat, boots and briefs… the answer is… NO. This is something you are free to add to your to-do-list. (you won’t violate Trademark Law, anyway)

BY: Vanessa Kaster, Esq., LL.M.

vk@kasterlegal.com

The case: Naked Cowboy, d/b/a Naked Cowboy Enterprises v. CBS and Bell-Phillip Television – Case No. 11 Civ. 0942–BSJ–RLE. Opinion issued by the S.D.N.Y. on February 23, 2012. See also: http://dockets.justia.com; @iplegalfreebies and www.kasterlegal.com.

Lady Gaga defends her NAME as a trademark Reply

Lady Gaga successfully trumped the trademark application of a company who attempted to register her name as a trademark without permission.  Kind of sneaky to attempt to register LADY GAGA as a trademark to sell makeup and jewelry.  (Celebrities often get big bucks to endorse products).

Can a name be used as a trademark?  Yes!  If it’s your own name… or if you have a signed written consent to use another person’s name.  When submitting a trademark application to register another person’s name as a trademark, a signed consent must be submitted along with the trademark application.  In this case, a signed written consent would be needed from Stefani Germanotta to use her stage name, Lady Gaga, as a trademark.  (Could also be different if a common name like JOHNSON were at issue.. but LADY GAGA is unique name of a mega-superstar).

What happened?  The unauthorized LADY GAGA trademark registrations were cancelled.  (The unauthorized applicant filed for express abandonment of the trademark applications).  …and a lawsuit was filed in Manhattan.

For more info on this topic see also —> http://wp.me/p10nNq-4F .  The trademark applications at issue were serial numbers 85032486 and 85033835 filed by Excite Worldwide LLC. @iplegalfreebies and www.kasterlegal.com.

BY: Vanessa Kaster, Esq., LL.M.

vk@kasterlegal.com


Which came first… the CHIKIN or the KALE? (Trademark Infringement Claim) Reply

photoWould you confuse a dude wearing a T-shirt that says “EAT MORE KALE” with a Chick-fil-A product sold under the slogan “EAT MOR CHIKIN”?

…I’m guessing there is a 99.9% chance that you wouldn’t confuse the two.  (Ask any 3 year old… they NEVER confuse a leafy green or healthy snack of any kind, with a chicken nugget.)

Evaluating how likely you are to be confused as to the source of the products is a fundamental aspect of evaluating a trademark infringement claim.  In this EAT MORE KALE vs. EAT MOR CHIKIN trademark infringement claim, Chick-fil-A sent a cease and desist letter to Mr. Bo Muller-Moore who hand-prints and sells  “EAT MORE KALE” T-shirts.  The letter challenged the EAT MORE KALE mark by claiming that it is likely to cause consumer confusion and have a negative impact on the Chick-fil-A trademark.  (Chick-fil-A allegedly sells 537 sandwiches a minute under the EAT MOR CHICKIN mark.)

Since the likihood of consumer confusion is slim, in this case, Mr. Bo is challenging Chick-fil-A’s infringement claim… and doesn’t have any plans to cease and desist his T-shirt printing business.  (As of today… his website says he cannot fill any more orders for EAT MORE KALE shirts before Christmas.   It seems the media coverage of this dispute may have boosted Mr. Bo’s business.)

BY: Vanessa Kaster, Esq., LL.M.

vk@kasterlegal.com

For more information: http://eatmorekale.com/ and http://www.nytimes.com article on 12/5/11 Chicken Chain Says Stop But T-Shirt Maker Balks and USPTO Serial No. 85412053 – “Eat More Kale”; USPTO Reg. No.  2197973, 2240326  – “Eat Mor Chikin;” @iplegalfreebies and www.kasterlegal.com.

FAME is a game changer for Trademarks Reply

Registering trademarks with the USPTO helps strengthen brands by giving brand owners exclusive use rights as well as defensive powers to block similar marks.  FAMOUS trademarks are stronger and have broader defensive blocking powers against other trademarks.  One example of a strong, famous trademark is APPLE.

The iconic Apple logo is widely recognized by consumers and this FAME grants Apple Inc. the power to block the trademark registrations of other logos that include a confusing similar apple graphic.   Defining what is a confusingly similar trademark… is the million dollar question.  A few years ago APPLE challenged a “Green NYC” apple logo.

Would you have been confused by the two marks?  Would you have thought they were from the same corporate or municipal source?  (Take a look and see what you think.   If this logo had a leaf on the stem… would you be confused? http://www.nyc.gov/html/greenyc/html/home/home.shtml vs. http://www.apple.com/)  The end of the story, is that NYC had to remove a leaf from the stem of its “Green NYC” apple logo… and then it was granted trademark registration.

How about them apples….

BY: Vanessa Kaster, Esq., LL.M.

vk@kasterlegal.com

 

For more information see: http://www.bloomberg.com/apps/news?pid=newsarchive&sid=aS6kWpRRWe9U&refer=us and USPTO Serial number 77975167 and Registration number 3753302; @iplegalfreebies and www.kasterlegal.com.

Trademark Law: Using someone’s trademark in your book, blog or website Reply

Using someone’s Trademark in your book, blog or website is something that you need permission to do.  Generally, trademark owners monitor use of their registered trademarks diligently and will often send cease and desist letters asking that unauthorized uses of their trademark be removed.  (For example the NFL and POPSICLE trademarks are heavily monitored and policed in this way.)

How do you figure out if a word is a registered trademark?  Sometimes you can tell by doing a quick GOOGLE search, or for a more definitive search look on in the USPTO’s list of registered trademarks.  Here are instructions for running a basic USPTO (US Patent and Trademark Office) search to see if a word is a trademark:

  • Click – http://tess2.uspto.gov/
  • Then Click on – New User Form Search (Basic)
  • Enter your business name in the ‘Search Term’ field
  • Click – ‘Submit Query’
  • To be really comprehensive, Back-page and search the key words in your business name separately

If you discover that a word is a trademark, it is possible that the trademark owner will give you permission to use their mark… ask em.

You might enjoy knowing that the inspiration for this post came up last night while I was talking to my mom.  She is currently writing a children’s story about a horse that likes specific types of candies as treats.  So, in order to list the candies in the text of her story, it’s important to know which ones are trademarks and which ones are not.  This way she can acquire the needed permissions to use the trademarks.  (my mom’s site —  http://www.bayouponytales.com/)

BY: Vanessa Kaster, Esq., LL.M.

vk@kasterlegal.com.