USPTO cancels REDSKINS trademark registrations

See here: http://www.nbcconnecticut.com/news/sports/Patent-Office-Cancels-6-Redskins-Trademarks-Washington-DC-Native-Americans-263643181.html?_osource=SocialFlowFB_CTBrand

The TTAB’s decision can be found here: http://ttabvue.uspto.gov/ttabvue/v?pno=92046185&pty=CAN&eno=199

Of course, this does not mean that the team has to change its name.  Considering the past statements of the owners, I suspect that they will remain the Washington Redskins for the foreseeable future.  I also suspect that the owners will appeal.  Stay tuned.

Brussels District Court rules Louboutin’s Color Mark is a Shape Mark

As reported recently by the IPKat here, a Belgian court has made a very curious finding.  Rather than as a color mark, it classified the famous red sole of Christian Louboutin’s shoes as a shape mark and then not only found against Louboutin, but also declared the mark invalid.

Frankly, I’m puzzled by this.  Unfortunately, I’ve not been able to find an English translation of the judgment and I don’t speak Flemish.  However, I’m fairly sure Louboutin will appeal and the last word on this has not been spoken.  Stay tuned…

Off Topic: German Supreme Court Rules in Challenge to the European Stability Mechanism (ESM)

In a widely anticipated ruling, Germany’s highest court (Bundesverfassungsgericht – the German Constitutional Court) today declined to block the European Stability Mechanism, or ESM.  Ruling on six challenges seeking the court to issue injunctions and claiming that the ESM is incompatible with the German constitution, the court declined to enjoin the German president from signing the treaty establishing the ESM.

The court’s decision can be found here (in German).

Breaking: Second Circuit rules in Louboutin v. Yves Saint Laurent: Score one for Louboutin

The Second Circuit here in New York has just issued its long anticipated decision in the Louboutin v. Yves Saint Laurent case. (Decision here: Louboutin v YSL_Sept 5 12). Having just skimmed the decision, it appears that Louboutin can score this as a victory, but only partially.

Here are some excerpts from the opinion, written by Judge Cabranes:

“We conclude that the District Court’s holding that a single color can never serve as a trademark in the fashion industry, Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., 778 F. Supp. 2d 445, 451, 457 (S.D.N.Y. 2011) (“Louboutin”), is inconsistent with the Supreme Court’s decision in Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 162 (1995) (“Qualitex”), and that the District Court therefore erred by resting its denial of Louboutin’s preliminary injunction motion on that ground.”

In other words, yes, you can have a trademark in a single color, even in the fashion industry.

“We further conclude that Louboutin’s trademark, which covers the red, lacquered outsole of a woman’s high fashion shoe, has acquired limited “secondary meaning” as a distinctive symbol that identifies the Louboutin brand. As explained below, pursuant to Section 37 of the Lanham Act, 15 U.S.C. § 1119, we limit the trademark to uses in which the red outsole contrasts with the remainder of the shoe (known as the “upper”). We conclude that the trademark, as thus modified, is entitled to trademark protection. Finally, we conclude that, because the monochrome design employed by YSL is not a use of Louboutin’s modified trademark, we need not, and indeed should not, address whether YSL’s use of a red outsole risks consumer confusion or whether the Louboutin mark, as modified, is ‘functional.'”

The court also held that “the District Court’s conclusion that a single color can never serve as a trademark in the fashion industry was based on an incorrect understanding of the doctrine of aesthetic functionality and was therefore error.”

In other words, yes Louboutin, has an enforceable trademark, but because YSL’s shoe was monochrome (non-contrasting), it loses on the infringement question. Had YSL’s shoe had a red sole and a contrasting upper, the result may have been quite different.

I think Louboutin should look at this as a victory, considering that their color mark has been much under attack for some time now. At least now Louboutin knows that (at least in the US), the mark is valid and enforceable (as long as the infringing shoes have red soles and uppers of a contrasting color).

This is my takeaway from a very quick skimming of the opinion. Further analysis will follow as soon as I’ve had a chance to give it a thorough reading. Stay tuned… (Question of the day: will either party appeal?)

Hat-tip to my friend and colleague Lorraine Fleck for alerting me to the issuance of the decision.