Trendy Shoemaker Cannot Slay the Fashion King

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Plaintiff LVL XIII Brands Inc. (“LVL XIII”) must not have heard of the old saying:  “Never strike a king unless you are sure you shall kill him.”  The New York start-up sneaker company decided to take on fashion king Louis Vuitton over a metal plate attached to high-end men’s sneakers.  LVL XIII’s claims were dismissed last week on summary judgment in a 107 page opinion.

                                                 uuduy

Hopefully, Plaintiff LVL XIII fared better last week with its presentation during New York Fashion Week show pictured above.  You may have heard of LVL XIII sneakers, because famous people such as Jason Derulo and Chris Brown have touted the sneakers on television and in magazines.

In the lawsuit, Plaintiff alleged that Louis Vuitton was engaged in trademark infringement and unfair competition by using its rectangular metal toe plate.  Examples of the toe plates at the heart of the dispute are depicted below.

                                             hjkyudu

The Court began its analysis of the motion for summary judgment by explaining that for a trademark to have protection, it must be “distinctive.”  An “inherently distinctive” trademark is one in which “intrinsic nature serves to identify a particular source.”  Plaintiff’s mark did not meet this standard.  Accordingly, the Court had to turn to whether the mark had “acquired distinctiveness” by achieving “secondary meaning” among the relevant consumers.  This means that “in the minds of the public, the primary significance of a product feature is to identify the source (e.g., LVL XIII) rather than the product itself (e.g. the sneaker toe patch).

To assess whether a mark has achieved secondary meaning, the Court applied the test used by the Louboutin Court (involving another shoe war over red sole mark Louboutin & Lessons Learned and Louboutin Red-Sole & Surrounding Contrast: An Implied Trademark Limitation) involving five factors:

  1. Advertising Expenditures: Plaintiff did not engage in traditional paid advertising (e.g., TV, magazines, newspapers).  The only evidence Plaintiff had was that it spent $82,000 in 2013 for marketing and promotion.  The Court found this insufficient.
  1. Consumer Studies: No such studies were conducted by Plaintiff.  Instead, Plaintiff tried to subvert this factor (I would call it requirement – but certainly the most persuasive factor) by retaining an expert to opine on the secondary meaning without a survey.  The Court refused to allow the expert to testify, because of his lack of expertise in performing empirical analysis, his inaccurate assumption that the primary customers were “urban males,” and his use of a method that was not discernable and was unreliable.
  1. Unsolicited Media Coverage: Plaintiff relied on Jason Derulo’s performance on Good Morning America where he wore and talked about the toe plate on the sneakers, and articles wherein Chris Brown discussed the toe-plated sneakers.  These instances were not enough to achieve secondary meaning.
  1. Sales Success: Plaintiff only sold 500 pairs of shoes (and only 1,000 pairs of shoes had been manufactured).  This was woefully insufficient for what is necessary to achieve secondary meaning.
  1. Attempts to Plagiarize the Mark: Other than the allegations being brought against Louis Vuitton, there had been no other third party attempts to plagiarize the toe plate.
  1. Length and Exclusivity of Use of the Mark: Plaintiff had been using the mark at most 8 months before Louis Vuitton used the toe plate on its upscale sneakers.  This was way too short of time to achieve secondary meaning.  Moreover, Plaintiff could not show it had exclusively used the toe plate.

Accordingly, the Court held Plaintiff could not establish secondary meaning and therefore could not succeed on its Lanham Act claims and therefore granted summary judgment.  Although it did not need to reach the issue, the Court went on to find that even if secondary meaning had been established the claim would still fail because there was no likelihood of confusion.  The Court explained that there were no commonalities between the parts of the toe plates.

Louis Vuitton brought counterclaims against LVL XIII in the lawsuit.  When the shoe is on the other foot so to speak, the Court also dismissed these counterclaims. Specifically, the fashion icon asked for declaratory judgment regarding Plaintiff having no exclusive right to the toe plate and seeking an injunction.  These counterclaims became moot when the Court granted summary judgment against Plaintiff LVL XIII.  In addition, Louis Vuitton alleged that the word mark “LVL XIII” was infringing on Louis Vuitton’s iconic Initial’s Logo depicted below.

                                                                          sytr

Although finding this a closer call than LV XIII’s claims against Louis Vuitton, the Court granted summary judgment in favor of LV XIII.  The Court explained that Louis Vuitton had a strong right to its stylized mark, but did not have exclusive right to every variation of LV.  Further, the Court explained that the similarity of the two marks was more than offset by their differences, including, visual, pronunciation and connotation differences.

What do you think of the outcome of this sneakers war?


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Winthrop & Weinstine, P.A. | Attorney Advertising

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