Louboutin and Yves Saint Laurent’s Trademark Update

The sage continues, but this time the brawl between the two high-end fashion titans takes place in the United States Patent and Trademark Office. Back in September of 2012, the Second Circuit issued an important fact specific ruling in regards to Christian Louboutin‘s trademark covering the red sole of their shoe in that protection will remain only when the red outsole is contrasted with the “upper” of the shoe. The opinion stems from the affirmation of the district court’s denial of Louboutin’s motion for preliminary injunction against Yves Saint Laurent (YSL). The Second Circuit specifically found that “it is the contrast between the sole and upper that causes the sole to ‘pop’, and to distinguish [Louboutin as] its creator.” So what follows is that Louboutin may have limited or no rights in the red sole by itself or when the sole and upper do not contrast.

Now Louboutin’s trademark U.S. Reg. 3,361,597 for the trade dress below is in a tug-of -war between the parties as to what the modified description of the mark should be following the Court’s Mandate to the USPTO to clarify the description consistent with the Court’s decision.

Following the Second Circuit’s ruling, the USPTO proposed the following “…The mark consists of a lacquered red outsole on footwear that contrasts with the color of the adjoining remaining portion of the shoe (known as the ‘upper’).” Louboutin shot back with what YSL argues is a dramatically “broaden scope of Louboutin’s rights.” Namely, Louboutin requests that the “mark consists of a lacquered red outsole on footwear that contrasts with the color of any visible portion of the shoe.” YSL’s main contention is with Louboutin’s deletion of the term “upper” which is replaced by “any visible portion of the shoe”. Slight difference? Maybe, but trademark law is all about the nuances, and this nuance YSL argues, will have a serious anti-competitive effect. The parties have been duking out this point during the beginning of February with no end in site as of yet.

Michael N. Cohen Super Lawyer

Cohen IP Law Group, P.C. is once again pleased to announce the nomination of Michael N. Cohen for inclusion in the 2013 Southern California Rising Stars Super Lawyers® publication.

Super Lawyers® is a listing of outstanding lawyers from more than 70 practice areas who have attained a high-degree of professional achievement. The selection process is multi-phased and includes independent research, confirmation that nominees are properly licensed, in good standing with the state licensing agency, and, when possible, that they have no history of disciplinary action that would warrant removal from the list. In addition to a general survey, an attorney-led research team reviews the credentials of potential candidates and assigns points based on a set of defined evaluation criteria, and those with the highest point totals are named to the Rising Stars list. No more than 2.5 percent are named to the Rising Stars list.

Super Lawyers was first published in 1991 by Law & Politics and was acquired by Thomson Reuters, Legal in February 2010. Thomson Reuters is a leading source of intelligent information for businesses and professionals.

Ludacris’ Trademark Battle for Disturbing Tha Peace

Early this month, Demitri Brown and Donna Evans-Brown (the “Browns”) filed a federal trademark infringement suit against Christopher Bridges p/k/a Ludacris, claiming that Luda’s “Disturbing Tha Peace” trademark is confusingly similar to their mark “Disturb the Peace.” However, “Disturb the Peace” has been cancelled since August 31, 2004. This means that the Browns no longer have a valid US Federal Trademark Registration, which ultimately means that they may likely only claim common law trademark rights and not Federal trademark rights.

On the other hand, Ludacris has several trademark registrations that incorporates “Disturbing Tha Peace” (Reg. Nos. 3159855, 2945795, 2923163, 2925238, 3220495, 2791443, and 3268946). Although the Browns allegedly have been using “Disturb the Peace” since 1988, as mentioned, the Federal registration was cancelled in 2004. Ludacris has been using “Disturbing Tha Peace” continuously since he started his record label “Disturbing Tha Peace Records” in 2000.

What does “cancellation” of a trademark mean? Cancellation is the proceeding instituted with the Trademark Trial and Appeals Board (TTAB), in which the petitioner alleges that the registered trademark was not or is no longer, a valid trademark. Cancellation may be based on the fact that a registered trademark is weak, it was procured by fraud, or it was abandoned. In Ludacris’ case, he claimed abandonment. This means that he alleged that the Browns have not used their trademark “Disturb the Peace” in connection with the sale of the goods specified in the Browns’ trademark application (Serial No. 76090517) for the statutory amount of time. Ludacris filed the petition to cancel the Browns’ trademark in late 2003. Default judgment was entered granting the cancellation because the Browns failed to respond to the petition. As such, the mark was effectively cancelled in 2004.

Seven years later, according to the documents pertaining to the Browns’ “Petition of Reinstatement”, which was actually treated as a motion for relief from the final judgment under FRCP Rule 60(b), of their cancelled mark with the TTAB, Ludacris allegedly committed fraud in his cancellation proceedings in 2003. Ultimately, the TTAB determined that, among other deficiencies in the petition, the seven-year wait would cause undue prejudice against Ludacris since, not only has Ludacris successfully registered multiple trademarks incorporating “Disturbing Tha Peace” in the interim, but he has also “spent in excess of approximately one million dollars over the years in marketing, advertising, and promoting” of the mark. In short, the TTAB denied the Browns’ petition.

This holding, although not necessarily binding on the federal district court case, may nevertheless be telling of what types of arguments each side will allege. It may very well be considered strong evidence that Ludacris essentially won the TTAB case because the Browns failed to diligently protect their federal trademark rights back in 2004 if they in fact did not abandon use of such mark. What is the moral of this story? Diligently follow up on the status of your trademark. Although it was not explicitly discussed in the TTAB’s Order, the Browns had an obligation to check the status of registration. In fact, Section 108.03 of the TMEP entitled “Due Diligence: Duty to Monitor Status” states the following:

Trademark applicants and registrants should monitor the status of their applications or registrations in cases where a notice or action from the USPTO is expected. Inquiries regarding the status of pending matters should be made during the following time periods:

(1) During the pendency of an application, an applicant should check the status of the application every six months between the filing date of the application and issuance of a registration; and
(2) After filing an affidavit of use or excusable nonuse under §8 or §71 of the Trademark Act, or a renewal application under §9 of the Act, a registrant should check the status of the registration every six months until the registrant receives notice that the affidavit or renewal application has been accepted.
Should the status inquiry reveal that a paper is lost, or that some other problem exists, the applicant or registrant must promptly request corrective action. 37 C.F.R. 2.146(i). Failure to act diligently and follow up with appropriate action may result in denial of the requested relief. The USPTO may deny petitions to reactivate abandoned applications and cancelled registrations when a party fails to inquire about the status of a pending matter within a reasonable time. See TMEP §§1705.05 and 1714.01(d).

Apple Lightning Harley Davidson Trademark Deal

The LIGHTNING trademark, OHIM Reg. Nos. 011399821 and 011399862, were first issued to Harley Davidson in 2005. Recently, “Lightning” has also become the preferred moniker for Apple’s smaller, 8-pin dock connector. On or around November 22, 2012, Harley Davidson allegedly “partially transferred” trademark rights to Apple with respect to the LIGHTNING mark.

That’s great. But, what does this really mean? Well, according to the OHIM Trade Mark search database, Harley Davidson still owns trademark rights over the international classes 25, 26 and 18, while Apple now owns the rights over international classes 9 and 28. Cool. So what does this mean? Apple has exclusive rights to use the LIGHTNING mark in connection with such things as eyeglasses, eyeglass frames, goggles, audio and video equipment, recorded computer software, electric signs, toy vehicles, pinball machines, computer game programs, and “games and playthings” in general. On the other hand, Harley Davidson retains exclusive rights to use it in connection with leather and imitation leather goods, travel bags, clothing, footwear, lace, and embroidery.

All in all, this sounds like Apple took appropriate measures by seeking a partial assignment of rights over the LIGHTNING trademark. They reached out to Harley Davidson and came to an agreement as to how they could co-exist in the marketplace rather than rely on the fact that Apple and Harley Davidson would likely use the mark with respect to “different goods.”

Smart decision, Apple! Ultimately, this will avoid costly litigation and retain a good professional relationship with another well-known brand (in regards to trademark usage against Harley Davidson anyway).

Kardashian Khroma Chroma Trademark Infringement

The Kardashians already had to deal with being accused of copyright infringement with their purse line, Kardashian Kollection. Now, just last week, Chroma Makeup Studios publicly denounced the Kardashians’ upcoming makeup line “Khroma Beauty by Kourtney, Kim & Khloe.” The Chroma Makeup Studios website’s home page is currently a long letter to its loyal fans declaring that it is in no way, shape, or form associated with the Kardashians. Further, it states a little blurb about the Federal trademark law and how the founders, Lisa Casino and Michael Rey III are “taking all appropriate steps to defend its reputation and the 12 years of goodwill [they] have built under the CHROMA MAKEUP STUDIO trademark.” But are these statements enough?

Oddly, after searching the USPTO, we were unable to find any registered or currently pending applications for Chroma Makeup Studio, under its business name or its other marks in which they claim trademark rights for including Chroma Colour, Croma Makeup Studio, Colour-Purity-You. But not surprisingly, the Kardashians have filed multiple applications for variations of KHROMA BEAUTY BY KOURTNEY, KIM, & KHLOE incorporating the “Khroma” mark.

We’re not clear why Chroma has not filed any applications as far as we can tell, and we won’t speculate either. However, without a registered trademark enforcement of their mark will be a bit trickery against the Kardashian’s. With that said, the question still remains – is the Kardashian’s “KHROMA” mark likely to confuse consumers or otherwise infringe upon the “CHROMA” mark? Maybe, maybe not, that would be up to a jury to decide. But even without a registered trademark, if the Chroma Makeup Studio’s letter to its fans were true, in that their customers are already confused, it could provide a strong basis for Chroma.

But another sticky issue that Chroma may have to deal with are the other companies like Revlon that have used the term Chroma, such as, “Revlon Chroma Chameleon” and “Chroma Luminescent” (Mana Products, Inc.). Why do so many cosmetic companies use the word “chroma”? Not sure, maybe, “chroma” has to do with the quality of a color or the “saturation” of a hue? With that said, it then seems appropriate that “chroma” has been used in connection with cosmetics, hair color, and paints. So, perhaps, the Kardashians may have a defense there.