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Second Circuit Hears Shoe Ornament Trademark Oral Arguments

Posted Monday, December 4, 2017 by Kyle Straughan

Last week the Second Circuit Court of Appeals heard oral arguments in the case of LVL XIII Brands, Inc. v. Louis Vuitton Malletier, a dispute over whether a metal band on the front of a shoe toe can be a trademark and whether it could acquire distinctiveness as a mark in a relatively short period of time.

In 2013, the then 29-year old Antonio Brown founded LVL XIII brands, a “luxury lifestyle” brand specializing in shoes and sneakers, which included a rectangular metal band on the front of the shoe toe. Upon discovering that Louis Vuitton was selling footwear with a similar metal plate adornment in 2014, LVL XIII filed suit, alleging trademark infringement among other unfair competition claims. While LVL XIII had a trade dress application pending at the time of suit, the trade dress application included “the wording ’LVL XIII’ engraved in the metal plate, and four small screws in the corners of the metal plate.” These features do not appear in the Louis Vuitton variants, and by their inclusion on the application could be considered significant to the mark. Notably, Vuitton has included metal bands on their footwear before, prior to LVL XIII’s first use.

At trial, the district court dismissed all of the claims on summary judgment, relying primarily on the circuit’s Polaroid test to find a lack of likelihood of confusion. The court found that there was extensive third-party use of metal shoe ornamentation, and that plate had not yet acquired distinctiveness on its own. Of particular concern for LVL XIII on appeal was what it described as the court’s “unprecedented and reckless ‘test’ for determining … whether a configuration of features is entitled to trademark protection: If a configuration is ‘two-dimensional,’ the district court held, it is a trademark; and if it is ‘three dimensional’ it is not.”

LVL XIII emphasized during oral argument on appeal that one of the key issues is reverse confusion, and its attorney asserted that vendors and other parties have refused to carry or associate with the products out of fear that they would be liable to suit from Louis Vuitton. LVL XIII’s attorney added that there were assumptions by parties that there must be some kind of arrangement between LVL XIII and Vuitton at play that they did not want to be entangled in.

Vuitton focused more on the viability of the plate as a trademark, arguing that the judge was not relying on the two-dimensional v. three-dimensional test, and emphasized the relatively short amount of time LVL XIII’s mark was on the market, which they claim was too short to establish secondary meaning. Vuitton’s attorney also highlighted the distinction between a product’s design, which is not protected by trademark, and a product’s packaging, or “trade dress”, which is. The district court held that the LVL XIII shoe was the former, not the latter.

While the court’s decision is pending, and it was unclear from the questioning what viewpoint they had taken, it could potentially provide interesting precedent regarding an ornamentation on a fashion design as a trademark.

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