By Anthony S. Volpe
Special to the Legal
The recent U.S. Court of Appeals for the Second Circuit decision in Christian Louboutin v. Yves Saint Laurent, Case number 11-3303, has lessons in it for trademark owners and trademark attorneys.
In the first instance, the decision to uphold the red sole trademark for Christian Louboutin may look like a tremendous victory, but on further review the potential for competitors to use colored soles with shoe uppers of like color exists. This, in the first instance, looks like a tremendous victory for Yves Saint Laurent. However, they both lost something from a trademark perspective. Red soles may or may not continue to have the same market cache for either of them. In addition, other competitors may begin to market shoes with colored soles and no one will have any special appeal because everyone has something “like it.”
The lesson for trademark owners is to be vigilant about policing valuable marks and be especially mindful of continuing the advertisement of the mark. Just relying on the presence of the mark in ads without pointing it out may lead to a passive view of the mark from consumers.
The lesson for trademark counsel is to be sure to remind the trademark owner about the need to police and advertise the mark. Also, trademark counsel should urge the trademark owner to pursue all available protection for valuable marks and to take all necessary steps to enforce any violation as soon as it is discovered.
The subject case is also interesting because both parties, Christian Louboutin and Yves Saint Laurent, are famous high-end fashion houses. One has to wonder what precipitated the current battle. From the outside, it never appeared as if there could be an actual winner and the baby split by the Second Circuit looks to be confirmation of that initial view. Any erosion of trademark value for one of these high-end fashion houses has to have an adverse effect on both of them.
Thus, the final lesson for trademark owners and counsel is to be careful of what you wish for and consider all angles before involving the court. The court may not see the matter through the same prism as you.
Anthony S. Volpe, a shareholder at Volpe & Koenig, has corporate and private practice experience in securing, licensing and enforcing all aspects of intellectual property rights. His patent work includes appeals before the USPTO Board of Patent Appeals and interferences and international trade commission, prosecution of patent applications, rendering opinions regarding patentability and enforcement of patent rights.