Seattle Trademark Lawyer

Plaintiff Christian Louboutin’s (left) and
defendant Yves Saint Laurent’s red soled shoes

The Washington Post Thursday reported on an interesting trademark lawsuit.

Women’s shoe designer Christian Louboutin has sued designer Yves Saint Laurent in the Southern District of New York over the latter’s use of red soles on its women’s shoes.

Christian Louboutin has a registered trademark for the color red in connection with the shape of the soles of women’s shoes. It’s Reg. No. 3376197; it’s been on the books in the United States since January 2008, with a claimed priority date of March 8, 2006. The complaint alleges Christian Louboutin has been the substantially exclusive user of red soles on women’s shoes in the United States since 1992.

Christian Louboutin alleges that Yves Saint Laurent’s soles are confusingly similar with plaintiff’s “Red Sole Mark.” The complaint goes so far as to allege that YSL is selling counterfeit Louboutin shoes.

But back to the article. It provides a good summary of the trademark principles at issue, something I love seeing in the mainstream press.

In short, Louboutin’s Red Sole Mark needs to have secondary meaning if it’s to be protected under U.S. trademark law as a color mark. That’s from the Supreme Court’s decision in Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995). But if the color mark has acquired secondary meaning — meaning that consumers associate the color with a single source — and the color serves no functional purpose, including an aesthetic purpose, then the color is perfectly protectable as a trademark. Think Tiffany’s robin’s egg blue color, also a registered (and extremely valuable) trademark.

Whether Louboutin’s red soles function as a trademark and don’t serve an aesthetic purpose remains to be seen. If its Red Sole Mark isn’t protectable as a trademark, it can be freely copied — at least as far as trademark law is concerned.

The fact its color mark is registered means the court will presume it’s protectable.

That said, for my money, the color’s part of the shoe’s aesthetics. But I claim no expertise in women’s footwear. None whatsoever.

The case cite is Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., No. 11-2381 (S.D.N.Y.).

House of Descriptive Trademarks: San Francisco’s House of Prime Rib

One month from now, 10,000 trademark lawyers will begin to converge on San Francisco for the International Trademark Association’s annual meeting.

Let me know if you want to meet up; my schedule’s packed but it wouldn’t be right if we didn’t connect!

One place I’m sure to check out: the famed House of Prime Rib. Sure, I just saw it featured on Anthony Bourdain’s show. And I’m not really a fan of prime rib. But I’m a major fan of descriptive trademarks. Where better else to go while in town for INTA? House of Prime Rib? I’m there!

What’s your favorite descriptive trademark (besides STL, of course)? My local fav is Seattle’s Best Coffee. Not protectable on adoption; mighty protectable now. How cool is that?

Plaintiff Glassybaby’s (left) and defendant Northern Lights’ candle holders

Since I recently posted slides from my talk on trade dress, I thought it was timely someone filed a product design claim in the Western District.

In March, Seattle-based Glassybaby, LLC, brought suit against competing candle holder seller Provide Gifts, Inc., d/b/a Red Envelope, and manufacturer Northern Lights Enterprises, Inc.

Glassybaby does not describe its trade dress (depicted above), but claims it is distinctive and that its designs are recognized by the consuming public as coming from plaintiff. It asserts claims for trademark infringement, dilution, dilution under Washington’s antidilution statute, and unfair competition.

Defendants have not yet filed an answer.

The case cite is Glassybaby, LLC v. Provide Gifts, Inc., No. 11-380 (W.D. Wash.).

The PTO announced today it would be open for business as usual even if the rest of the federal government shuts down due to the budget stalemate.

That’s good news for trademark practitioners, who depend on the PTO to process applications for federal registration.

It’s also understandable — the PTO makes big bucks from those same trademark (and patent) practitioners, and shutting it down would cost taxpayers a lot more money than it would save.

It’s nice to see this report.

On Monday, the World Intellectual Property Organization (WIPO) announced that international trademark filings under the Madrid Protocol increased by 12.8% last year.

The biggest gainers were South Korea and China, which both increased a whopping 42% over their previous years’ filings.

U.S. filings were up by 30%.

WIPO says we’re back to the filing volume it saw before the economy started to slide.

That would seem to signal an economic recovery of sorts. That’s not to say my house will ever be worth what I paid for it, but still.