The French luxury brand jugernaut PPR [Pinault-Printemps-Redoute] effective June 18th will be known as Kering.  

PPR is home to many brand such as "Gucci, Bottega Veneta, Yves Saint Laurent, Balenciaga, Alexander McQueen, Stella McCartney, Sergio Rossi, Brioni, Boucheron, Girard-Perregaux and JeanRichard, with Qeelin and Christopher Kane its latest acquisitions."

PPR was started by Francois-Henri Pinault [fun fact: He is married to actress Selma Hayek] in 1963.  The company has sold its shares of Printemp in 2006 and plans to sell its shares of Redoute by the end of the summer.

The new logo harkens back to the companies Bregne roots and indicates the company's move from luxury only to a fashion and accessories company. The logo features a "stylized owl with a heart-shaped face — and tagline, "Empowering Imagination."

Quite frankly, I hate it. There is nothing imaginative about the owl and I find it overly feminine and distractive. I am not really a fan of the the name as it reminds me of Keurig, the coffee company.

But then again...I am not a fan of change.

Source: WWD

A Parsons design student has been hit with a lovely cease and desist letter from Cartier for his Cuntier t-shirts and snapback hats.  The Parsons student said he thought of Cuntier after his friend had a negative experience with Cartier sales associates.  I imagine this bitching session of design students over wine and cigarettes and voila!-Cuntier.

I was immediately intrigued by this "brand" because the name Cuntier is extremely witty and actually got a chuckle out of me.  Cartier apparently did not share my amusement.

Is this likely to cause confusion? No. Cartier does not make t-shirts and hats. Tarnishment? Very unlikely. Cartier succeeded in scaring a poor design student who wanted to avoid legal wranglings.

Cartier also lost an opportunity to cater to new and emerging customers. The brand was created by the anger a CUSTOMER felt because they were rudely treated at Cartier.  This customer then let their friends know about their dissatisfaction. This cease and desist letter just further cements to them and their friends that Cartier is a brand for cuntiers.

Source:  The Huffington Post

Sorry for the Beyonce pop culture reference so early in the morning :)

A multi million dollar ring on Costco's website

Tiffany and Co., the famous jeweler, is suing Costo, a bulk-rate retailer for trademark infringement, counterfeiting, unfair competition, injury to business reputation, false advertising and deceptive business practices.  Tiffany and Co. alleges that Costo has been selling rings under the 'Tiffany' mark for years.

Tiffany owns 39 trademarks protecting their rings and Reg.No. 85569721 protects online representation of their mark.

Tiffany and Co., alerted by one of their customers of Costco's alleged infringement, launched an internal investigation and "....discovered it was not a one-time rogue event at one store" and realized they  "had a big problem that had to be dealt with."  With over 600 clubs worldwide Costco is the world's largest wholesale club operator.

Tiffany counsel said in a statement

"We now know that there are at least hundreds if not thousands of Costco members who think they bought a Tiffany engagement ring at Costco, which they didn't," Jeffrey Mitchell, Tiffany's counsel in the case, said in a statement. "Costco knew what it was doing when it used the Tiffany trademark to sell rings that had nothing to do with Tiffany. This is not the kind of behavior people expect from a company like Costco, and this case will shed a much needed light on this outrageous behavior."

Tiffany is represented by Dickstein Shapiro, LLP.

Sources: Huntington Post, WSJ

In this edition of Double Jeopardy FashionFaceOff we have singer Solange Knowles and acclaimed fashion designer Diane von Furstenberg both in DVF.

DEFENDANT: Solange first wore the matching pants and blazer to a Delta Airlines Grammy Awards event in L.A.  The Vint Blazer at $375 and Benett pants at $275, both DVF Spring 2013, are available at Neiman Marcus.  She kept her accessories and footwear simple and finished her look with red lips and her signature afro.

PLAINTIFF:  DVF wore her own creation for an exclusive interview with model Elettra Wiedeman for The Cut for their New York Greats segment.  Contrary to Solange, Diane was not afraid to compete with the prints and wore a black shirt, bright footwear, and statement jewelry.  The full interview can be found here.

HOLDING: This suit is a testimony to the versatility of DVF.  The printed look works for a woman in her 20s and for a much more mature woman. 

credit: FashionBombDaily/The Cut

Gucci continues to win more legal battles.  The Court of Florence found in Gucci's favor and found that Prada's claims of tortious interference by Gucci were baseless.  Prada filed the suit when Gucci acquired Regain, an Italian footwear company in 2001.

Prada will not receive their requested 24 million euro and will have to cover all of Gucci's litigation fees and expenses.

Source: WWD

On January 25th, after only two days of deliberation, a federal grand jury found retailer Aeropostale and its manufacturer Ms.Bubbles guilty of infringing the copyright held by L.A. fabric printing company L.A. Printex Industries, Inc.

This case stems from a 2009 suit filed against Aeropostale and its manufacturer which was dismissed by the lower court. In April of 2012 the Ninth Circuit reversed and remanded.  In order to find copyright infringement plaintiff must show that  

(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original

L.A. Printex did not have direct evidence of copying but the court found that a reasonable jury could find that 

(1) that the defendant had access to the plaintiff's work and (2) that the two works are substantially similar.

L.A. Printex had sold their print to more than 50,000 yards of their fabric to local L.A. fabric manufacturers's and had displayed it at local trade shows.  The federal court found that this was sufficient to show that Aeropostale's fabric supplier had copied the design.

Picture Source: Arendt Fox

Milly NY, a clothing company founded in 2000 has recently changed their logo. Milly founder  Michelle Smith worked at Hermès, Louis Vuitton and Dior before launching her own line. 

Michelle Smith said of the new logo on the left below

“The label is the filter to the brand. It’s the window to your brand and how it’s perceived. The previous logo was too retro. We’ve evolved beyond that. The collection evolved, but the label stayed the same. It was definitely stuck. It was a 1950s, 1960s ironically vintage-inspired label. Today, I’ve evolved much more into a modern collection, inspired by classics but very forward thinking."

Milly holds sixteen trademarks for their brand many of the old stylized logo (Reg. Nos. 4062461. 85301416, 85613437, & 85975635).  They will likely file another set of trademark applications seeking to protect their new stylized marks. 

While changing marks might be deemed necessary for a designer they present a problem for counsel.  New applications must be filed and the problem may arise where infringers start using the old mark.  The use of the old mark might confuse consumers who might still think both marks are still in use.

Source: WWD, Net-A-Porter

It was announced recently that H&M will debut its newest collection at Paris Fashion Week. The last collection H&M showed at a fashion week was with their Versace collection.

But does fast fashion belong on the same runways as fashion houses?

There are positives to fast fashion on the runway.  It means that they are creating their OWN uniqe goods and are not copying the designs of others.  A fast fashion retailer I never expect to hit the runway is Zara. But if fast fashion retailers show at fashion weeks it means they are employing actual designers and not copiers.  JCrew shows at New York Fashion Week and their show is very popular.

The negative is that it might diminish the allure of fashion houses.  If H&M and high end lines are shown in the same show...is there incentive for consumers to buy the more expensive items?

The "democratization of fashion" continues.

The Lululemon design patent suit illustrated the power that design patents may hold for fashion companies.  A design patent, unlike a utility patent, only protects the surface ornamentation of a patent and cannot contribute to the item's function.

Design patents are frequently considered cost-prohibitive or useless in an industry that is constantly changing.  It seems that design patents are well suited for designs which are repeated throughout a designers collection. 

The Louboutin Bow as we call it, would be a great candidate for a design patent.

The first shoe was introduced in 2010, the denim in the middle is a handbag, and the Clou Noeud was introduced in 2009. Though each shoe is different, closed toe versus open toe, the bow design element remains.  Louboutin has since made other shoes and handbags with the same repetitive element.

Securing a design patent would be another mechanism for the brand to protect not only their soles but also design elements in the uppers.

Beyonce is gearing up to take over 2013 and rumors are swirling around that she will be partnering with fast fashion retailer H&M for a summer line.

Past collaborators with H&M include Versace, Karl Lagerfeld, and Stella McCartney. 

Beyonce would not be the first songstress to work with the retailer. Both Kylie Minogue and Madonna have released lines with H&M.

This move would be interesting because Beyonce's House of Dereon line is not well known in the US.  With floundering sales the line was limited to European markets only for a few years.  This would be an good way to re-vamp the line and introduce it to a whole new audience.  Maybe then the line will lose its moniker as the House of DoesItWrong.

source

His career with the National Football League and the New York Jets may be up in the air, but Tim Tebow has one thing locked up for certain: a registered trademark for 'Tebowing.'

On Christmas Day [there might be some sort of coincidence there considering his loudly proclaimed Christianity] Tim Tebow received trademark number 4,263,370 for 'hats and t-shirts' for Tebowing.  The SPS wonders if he'll actually use the mark since he once stated he had no interest in actually producing anything but just wanted to prevent others from capitalizing on his image.  We all know of course, a trademark cannot be used for such a purpose.

via Eric Pelton

LuLuLemon Athletica Inc. is seeking a voluntary dismissal with prejudice against Calvin Klein.  A dismissal with prejduice means that LuLuLemon can never again litigate the same subject matter against Calvin Klein.

LuluLemon had filed suit alleging that Calvin Klein was infringing upon their design patent and producing identical yoga pants.

The LuluLemon case was a highly anticipted one in fashion law because retail companies so rarely apply for design patents and so rarely litigate them as well.  One company that holds many design patents is Nike and it appeared that LuLuLemon was following their path of protecting their intellectual property by mixing design patent & trademarks in their portfolio.

Lululemon has over 16 design patents and 7 trademarks registered to them.  Below are the registered design patents for their yoga pants.

Two days ago, we reported that Chris Benz (Michelle, Sascha, and Malia Obama have all worn his designs)  was accused of using photographer Jessica Nichols' print 'Loads of Ranuncks' in his Spring Collection without her permission.  If you were not convinced please see the gif below and our original post.  It is certainly convincing and damning.

The SPS reached out to Jessica to ask her about her photograph.  She could not comment on specific legal strategies but answered the questions she could.

What was your inspiration behind the photograph?

http://www.sweeteventide.com/2011/04/poppytalk-spring-colours-week-wednesday.html

How did you discover that Chris Benz had used your photograph?

I first learned about Chris Benz's designs when someone who inquired about licensing the "Loads of Ranuncks" photograph brought it to my attention. 

How do you generally grant permission to others to use your pictures?

Anyone interested in licensing my images can reach me via email to discuss usage and payment.

Have your attorneys reached out to Saks Fifth Avenue and Lancome as well?

Yes, my attorneys have reached out to Chris Benz, Lancome and Saks Fifth Avenue.

Thanks to reader, law student & blogger Lauren D. Shinn for her great gifs! 

According to a study recently released by Censis, counterfeit goods have cost 110,000 jobs and lost resources of 1.7 billion euro in Italy.

These numbers are eye-opening especially in a country that is suffering deeply in this economy and which has a limited amount of exports.

These figures emphasize that protecting brands is not something that should be overlooked, but it is an issue that has serious economic repercussions on the economy.

source

The Trademark & Appeals Board granted P.Diddy's (Sean Combs)petition to cancel the mark DIRTY MONEY based on abandonment.   Although his musical group Dirty Money has dissolved, it appears as if P.Diddy wants the trademark rights for DIDDY-DIRTY MONEY to produce, among other things, men and women's clothing.  He was barred from registering his mark due to the already registered mark DIRTY MONEY and sought to cancel the mark in order register DIDDY-DIRTY MONEY.

 CANCELLED  MARK

This case serves as a reminder to trademark rights holders to USE IT OR LOSE IT.  A trademark is considered abandoned when

"its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. "Use" of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark." Trademark Act Section 45, 15 U.S.C. § 1127.

The TTAB decided that LaConfora (President of the company who owned the rights to DIRTY MONEY) had simply not done enough during the statutory period to show that he intended to use the mark.  He claimed that he had contacted Damon Dash, Kanye West, and Pharell Williams about the line and was seeking licensing and distribution deals, and was even in talks to produce t-shirts for HBO's 'The Wire.'  The TTAB concluded that these conversations and the sale of 3 dozen tshirts was simply nominal and insufficient to demonstrate use within the statutory period.  One argument LaConfora used which tickled us was that the line DIRTY MONEY "was ahead of its time."  Diddy used the same line when explaining why his group DIRTY MONEY failed.  The irony.

The lesson is that trademark rights come with responsibilities and rights holders must always ensure that they are using their marks or risk losing their exclusive use of their marks.

When your own followers express concern over your new "design" perhaps you should re-think your marketing strategy.  Touted as a line whose purpose is to  promote "creative design" Rich Soil, backed financially by former LA Laker, turned Maverick, now LA Clipper, Lamar Odom, husband of Khloe Kardashian, is now selling a  $65 sweatshirt that features the iconic interlocking Chanel C's.    

What is interesting is that Chanel is just now seeking trademark protection for their interlocking C trademark for clothing despite having registered the same mark in different classes.  The mark was granted protection for electronic covers, temporary tattoos [what?!],  retail store services in womens ready to wear clothing and shoes, and leather goods.  Their previous registrations were general and broad and they are now seeking a very specific registration with enumerated clothing types.

Is there a likelihood of confusion? Likely not.  Particularly because the 'C's' in the Rich Soil mark (Reg.No, 3606546) are within a word, a word that Chanel has never used.  However, this is a dilution and/or tarnishment of Chanel's mark.  The Kardashian [-Odoms] have been accused of trademark infringement and of unoriginality before. Below are our favorite comments taken from Khloe Kardashian-Odom's own Instagram account.

1. Coco's gonna get ya for that..

2. That is copy right infringement. Those will never make it on the market

3.  Agreed..double c's u need to legally ck tht.

4. Totally looks like wannabe Channel... So not original!!!

5. Good Chanel brand knock off! Smh no originality!

6. Great stuff. But is it allowed?

When the average layperson calls foul....so will Chanel.

Sources: Instagram, Chanel Trademark USPTO, Rich Soil, The Fashion Law

According to WWD, YSL [does the name change not apply here? Confusing] has decided to halt its suit against Christian Louboutin.

The previous ruling was discussed in this post in which the court held that monochromatic [red upper and red sole] shoes are permissible and would not violate Louboutin's trademark.

David Bernstein, attorney for YSL, said

Now that the Court of Appeals has definitively ruled for Yves Saint Laurent and has dismissed Christian Louboutin’s claims, Yves Saint Laurent has decided to end what was left of the litigation and refocus its energies on its business and its creative designs. By dismissing the case now, Yves Saint Laurent also wishes to ensure that the Court will not make any further rulings that put at risk the ability of fashion designers to trademark color in appropriate cases.

The French Courts have been very busy of late!

On Monday September 17th, a French Court held that a designers work while at Van Cleef was not his own intellectual property but rather the property of his employer.  

The plaintiff and ex-employee, Thierry Berthelot claimed that his designs were his own work but the Court held that his work, while employeed at Van Cleef, constituted a part of the company's collective work.  Berthelot was also charged 10,000 euro for withholding his drawings during the length of litigation.

The Frivole Collection which Berthelot claimed he created.

Elisabeth Ponsolle des Portes, president of French luxury association Comité Colbert, told WWD  “This ruling truly recognizes the concept of collective works, which is clearly a very important element for the luxury sector as a whole, since many luxury houses have based their economic model on this notion of collective works — from the manager to the designer, the artisan, the prototype maker and so forth."

French legal analysts told WWD the court detailed the various elements that determine whether a work should be considered collective. This ranged from the house’s heritage to the amount of instructions given to employees and the role of internal committees and organizations in assigning tasks. French law contrasts with the system in place in many other jurisdictions, where employees automatically relinquish their rights to their employer under the terms of their employment contract, a mechanism known as “work made for hire.

Berthelot claimed that he created his designs outside of his scope of employment.  How Van Cleef then came to produce them he does not explain.  Berthelot plans to appeal this decision.  He has already won two victories against Van Cleef including his claim of unfair dismissal. 

This case is far from over.

Read more at WWD.

It is tshirt week at The SPS.  Fashion Bomb Daily did a feature on C.O.I. or Conflict of Interest, a tshirt company that was founded earlier this year.  C.O.I. describes itself as

a fictitious, convert goverment agency charged with confiscating "unlicensed" designer goods. Its agents raid warehouses and shipping containers worldwide to obtain the few items that have appeal, the rest are destroyed. Despite their origins the selected items that remain are of the highest quality and redistributed through proper channels. Simply put they operate in secret so that you can stunt in public.

Their tees play on many well known and historic fashion houses such as Balenciaga and Givenchy.  The SPS is not sure what C.O.I.  means by "unlicensed designer goods" since Balenciaga has a trademark for their goods (Reg. No.72450041), as do Givenchy (Reg. No.72235180) and Botegga Veneta (Reg. No. 79038900). 

Do these marks tarnish the reputation of these French and Italian houses or is this an example of free speech and satire?  It seems to be the former but C.O.I. could argue the latter. The fact that they put 'HARLEM' on some of their t-shirts helps consumers further differentiate between C.O.I. and the luxury brands that they imitate, which are all ostensibly made in Europe.  By evoking Harlem, C.O.I. creaters are reminding consumers of their urban and creative roots.  They could also argue their use is nominal and the sophistication of luxury brand consumers would prevent confusion.

However, this niche industry of mimicking the names of fashion houses with slight variations is growing much, we imagine, to the dismay of fashion houses.

Addition: C.O.I. responded to this post and said

The t-shirts are made to be fun. We are well aware that our shirts are not to be taken as the authentic items.

World Tricot, a small knitwear company located in Lure, France, has scored a judicial victory against luxury powerhouse Chanel.  The appeals court found that Chanel had copied World Tricot's knit design and fined them 200,000€ or 258,840 USD for copying the design. 

via

The French appeals court reversed a previous ruling in 2009 that fined Chanel for breach of contract but held that Chanel had not copied World Tricot's design. 

The new ruling said that "a visual comparison of the original and the crocheted Chanel vest shows that the vest is a slavish copy".

World Trciot is a collective of artisans that produced fine high quality knits for luxury brands with Chanel as the biggest customer.  In 2005, founder Carmen Colle, spotted her unauthorized designs in a Chanel shop and complained to Chanel.  Soon after, Chanel decreased their orders with World Tricot and soon after suspended business relations all together.

World Tricot was started by Colle to employ women in an impoverished part of France and as a result of the litigation were forced to close.  Colle hopes that the damages from this suit will help her re-start her company.  via.

In May 2012, clothing company T-Shirt Policy, designed by Natasha Petafi, launched their Coco Creme shirt.  

Source

Petafi does not hide her love for Chanel saying on her own blog that her debut collection "is based on COCO CHANEL for girls."  While there is nothing wrong with being inspired by a brand and their direction, a designer should not use their marks in their 3rd party products.  However, cute and whimsical the shirts are, T-Shirt Policy does not want to go up against Chanel.

Are Chanel customers likely to be confused as to the source to these shirts? Maybe. Maybe not.  The SPS was confused because bloggers wore these shirts with genuine Chanel items.  There is a case for dilution and tarnishment.

The SPS has reached out to Chanel representatives and is awaiting their response.

The CFDA's newly designed Designer Manifesto was revealed at the Prabel Gurung show last week.  800 members and friends of the CFDA will also receive a journal accompanying the updated manifesto.  Steven Kolb, CEO of the CFDA told The SPS that he hopes the new manifesto provides designers with  "continued awareness and inspiration to be original." 

Here at The SPS, we rarely if ever advocate knockoffs.  In my opinion, a designer may be inspired but should not imitate the works of others.  A new book will soon be released arguing that imitation is great for the economy. [confused face].  Exerpts from the NPR interview are below.  Tell me your thoughts.

I was able to contact Steven Kolb, CEO of the Council of Fashion Designers of America, who charaacterized the premise of this  book as "just wrong."  Couldn't agree more.

On why copying is a good thing for the fashion industry

"The first is that fashion relies on trends, and trends rely on copying. So you can think of copying as a turbocharger that spins the fashion cycle faster, so things come into fashion faster, they go out of fashion faster, and that makes fashion designers want to come up with something new because we want something new. We're sick of what's out there.

"The second is that copying helps condense the market into something that consumers can understand, so people want to follow trends, they want to be able to dress in a way that's in style; they have to understand that."

On who copies in fashion

"We tend to think about copying and knockoffs as something that either happens in a store like Forever 21, or some of these firms that specialize in knockoff dresses, like Prom Girl or Faviana, which are companies where you literally go to their websites and they say: Here's the original, and here's our version of it.

"... And they're very upfront about it. They don't try to hide it. They trumpet that fact. Now, that's a big part of the knockoff industry in fashion. But at the higher levels you see it as well ... there it's a little more subtle, [and] there's even been, in other countries, where copying in the fashion industry is illegal, there have even been lawsuits about it. [Ralph Lauren lost in a lawsuit brought by Yves Saint Laurent in France.]

On consumers, who reap the benefits of copying and competition

"By no means is copying limited to the lower end. But I think in practice, the majority of copying that we see in the fashion industry is lower down in price. And that has some positive effects. So, regardless of the effects on the industry overall, it's good for consumers in the sense that copying breeds competition. When you have copies, it means you have multiple things competing in the marketplace that are similar. And if they compete on price, then consumers have an option that they wouldn't otherwise have."

According to the HuffingtonPost, graffiti artist and former employee, Patrick Waldo is accusing the high street retailer of stealing his "trademark" graffiti  tag.  While Zara is no stranger to such accusations, this might be an instance where their accuser does not have any legal standing.

Via

Waldo describes his tag

I came up with the idea [for my graffiti] in March 2010. I was at a subway station in Times Square and I saw an ad on the platform that from far away looked like it had a moustache drawn on it. As I got closer, I realized some graffiti writer had just tagged his name on the actor's face. I figured if there was gonna be any text on someone's upper lip, it should just say 'moustache.'

I went home and practiced on magazine ads, came back a few nights later with a Sharpie, and started drawing 'moustaches' on every ad I saw. I didn't stop until the NYPD arrested me in June 2011.

Waldo of course wants to be compensated

There's no doubt in my mind that Zara stole my design.  It's not as if I came up with the idea and then kept it to myself. I put my moustache on thousands of posters all over New York City for well over a year. They got press before I was arrested."

While the similarity between Waldo's tag and the Zara shirt is undeniable it appears this is a case in which the word 'trademark' is being used incorrectly.  Graffiti artists call their signature tags their trademarks in a common and colloquial sense but of course these are not traditional trademarks.  Waldo never made these moustaches with any purpose to sell them.  What goods or services was he marketing to consumers when he was tagging the city? He was not selling anything to anyone.

While Zara may have appropriated his idea, it seems unlikely that Waldo has any remedies under traditional trademark law.

The second round of the Louboutin v. YSL court battle was handed down today—and the ruling was essentially positive for both companies. 

The Court ordered the PTO to amend the Red Sole Mark [RSM from hereinafter] and held that the mark can only be infringed upon when the upper is different from the sole [red on red].  Since the YSL pump at issue is monochromatic, YSL did not infringe the RSM.  Since they did not infringe the RSM, the lower court was correct in denying Louboutin their preliminary injunction.  The Court declined to consider YSL's counterclaims.  [off topic: am I supposed to just say SL since their recent re-branding?]  The Court also did not say anything of a specific pantone shade.

The monochromatic focus was an interesting one and grants some clarification.  The Court acknowledged that Louboutin had acquired a secondary meaning with his mark and those "in the know" know his shoes by their sole.  However, the Court focused on the fact that Louboutin counsel only submitted four photos with shoes that had both a red sole AND a red upper, the rest had contrasting uppers.

As the District Court observed, “[w]hen Hollywood starlets cross red carpets and high fashion models strut down runways, and heads turn and eyes drop to the celebrities’ feet, lacquered red outsoles on high-heeled, black shoes flaunt a glamorous statement that pops out at once.” Louboutin, 778 F. Supp. 2d at 448 (emphasis added)). As clearly suggested by the District Court, it is the contrast between the sole and the upper that causes the sole to “pop,” and to distinguish its creator.

 

 Combined with the fact that  "…Louboutin’s own consumer surveys show that when consumers were shown the YSL monochrome red shoe, of those consumers who misidentified the pictured shoes as Louboutin-made, nearly every one cited the red sole of the shoe, rather than its general red color."  This means that shoes with have both and red uppers will not violate the trademark.

As CEO of YSL's holding company PPR, Francois-Henri Pinault  said

“[i]n the fashion or luxury world, it is absolutely clear that we recognize the notoriety of the distinctive signature constituted by the red sole of LOUBOUTIN models in contrast with the general presentation of the model, particularly its upper, and so for all shades of red."

Thankfully, the notoriety will continue. But will the market be flooded with red upper and red sole shoes? How will that add another facet to this color mark issue? 

According to Reuters, Hermès has filed suit against LVMH, a company that owns a 20% of its shares.  Hermès is considered the second most profitable luxury brand in the world and LVMH the first.  LVMH has taken a keen interest in Hermès despite Hermès's preventative steps to prevent LVMH from assuming control of the company.

Hermès is apparently still unsettled by the LVMH's 20% interest and has accused LVMH of insider trading and stock manipulation in acquiring those shares.  An Hermès spokesperson said the complaint " [I]s the logical consequence of the questions raised by the terms of LVMH's entry in the [stock] capital."

LVMH has fired back saying it plans on filing a countersuit on "blackmail, slander and illegal competition" and repeated its initial stake-building was "perfectly regular".

Obviously despite LVMH's claims that its acquisition of Hermès shares was friendly, it is anything but.  As of December 2012, the Hermès family owned over 60% of shares, 20% is owned by LVMH and the rest are considered free floating.  At the end of 2011, the Hermès family created H51 a holding company to prevent LVMH from taking over Hermès as it had done with so many other luxury brands. source.

This will be a case to watch.

Olympic gold medalist, Las Vegas reveler and friend of Prince Harry, Ryan Lochte, is facing difficulties outside of the water.

Ryan, who has demonstrated his....interesting personality outside of the pool, is coming out with a clothing line called JEAH.  Yes, JEAH...a boisterous yell that is a variation of YEAH; a sound that to be honest was made famous by Celebrity Apprentice winner and Crunk Music creator Lil Jon  [bet he wished he had trademarked that].  At least that is where I am assuming Ryan appropriated JEAH.

Ryan, taking a move from the Kardashian play book, is in talks to have a reality tv show on E! and is starting his own clothing line. The clothing line is strange from a man who professionally wears very little clothing.  

But I digress-apparently another company is also named JEAH and they have sent Lochte a seize and desist letter.  JEAH COMMUNICATIONS, a computer software company, since 2002 has held federal trademark rights for JEAH for  "Hosting the web sites of others on a computer server for a global computer network." {Reg. No. 2661650).

On August 1st and 21st JEAH COMMUNICATIONS filed two intent to use applications for JEAH in Class 9, 14, 16, 21 and 25.  They are seeking protection for all sorts of apparel and accessories and even have a store.  According to their wordpress site the brand has been making tshirts as early as 2003.  They likely filed their applications when they heard of Lochte's plans.

 source

Does this mean that Lochte will have to find another catchphrase?  I can only hope so.

Earlier this summer while visiting the Christian Louboutin Horatio Boutique in New York City, the sales associate told me that they would soon be opening a men's only boutique across the street.  The store opened today, I expect with much anticipation.

I knew that Christian Louboutin was popular amongst women, but had no idea that men were equally attracted to Louboutin as well.  The sales associates said that their men's shoes sell out faster than many of the women's styles.  

via

While the men's sales currently only account for about 5% of Louboutin total sales, Alexis Mourot, chief operating officer told WWD,  “The global strategy is to increase the number of dedicated men’s boutiques.  Within the next few years, we hope to increase the business by 20 percent.”

The most interesting portion of the store is a tattoo parlor where customers can have their own art imprinted on their shoes.   Louboutin offers custom orders but this is the most unique.  Read more at WWD.

Jimmy Choo has opposed the registration of a corporation seeking to register CHOO DAVEE LIFETIME, PROMISES.

Beauty Gems Factory Co., Ltd., a company located in Bangkok, Thailand has filed an application seeking to register CHOO DAVEE LIFETIME, PROMISES in International Class 14 for Diamonds; Jewelry; Precious metals and their alloys, namely, gold, silver, platinum; Semi-precious and precious stones; Timepieces and chronometric instruments.

Jimmy Choo registered its mark JIMMY CHOO on August 26, 2008 with registration number 3,491,347.

A comparison of the two marks reveals that the marks only share the word CHOO in common.  CHOO DAVIS also includes the words LIFETIME PROMISES as a part of its mark and an ornamental design.

JIMMY CHOO's mark does include protection for jewelry but the jewelry is limited to cuff links, cuff links, tie pins, cigarette cases, jewelery cases, key rings and household containers.  CHOO DAVIS's mark seems to be much broader.  

I look forward to seeing how this case evolves.

Today's edition features ever popular and imitated shoe designer Christian Louboutin and his 120mm pigalle spike and singer-cum-shoe-designer Madonna and pumps from her new Truth or Dare line.

PLAINTIFF:  Christian Louboutin debuted his Pigalle spike in 2011 and they have been a celeb favorite.  Every season he introduces a new version, varying the color of the spikes and the material used, while maintaining his iconinc Pigalle shape.

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DEFENDANT: Madonna has recently entered the fashion arena.  First with her Material Girl line and now with Truth or Dare? a line that shares the same name as her 1991 self-documentary.

 Truth or Dare? is sold at Macy's and Nordstrom in the US.  The line is sold at Selfridges in the UK and is already being touted as their most popular pop up shop with styles frequently being sold out.  And who can blame customers?  Madonna's 'PANU' is a cheaper dead ringer for the Louboutin Pigalle but with a shorter heel and of course without the red sole.  If designers could lay claim to designs on their uppers [outside of design patents], then Louboutin would have a case.

VERDICT: IMITATION 

The United States Custom and Border Patrol seized approximately $18 million dollars worth of counterfeit Louboutin's, originating from China, in June and July.

Source

The 20,457 pairs have an estimated retail value of $18 million which works out to $900 a pair.  Which begs the question, if you are paying $900 for a fake pair why not get an authentic pair?  I am sure they are sold at much lower prices, perhaps at $200 a pair.

Once I too inadvertently  bought a pair of fake Louboutin's in my search for a pair of Lucifer Bows. I didn't even have to open the box and could tell they were counterfeit.  They even smelled of cheap pleather.  The seller had an authentic photo in their auction and pulled the old bait and switch and sent me a fake pair. I quickly filed a charge back on my credit card and threw out the shoes.

Fake Lucifer Bow on left; Authentic pairs on the right.

So how to avoid buying a fake online if you are looking for a hard to find pair?

1. Don't believe any website outside of the official Christian Louboutin site with the name Louboutin.  They sell fakes. No if, ands, or buts.  

2.  It is best to buy from authorized dealers like Footcandy, Saks, Pam Jenkins, Barneys and Nordstrom.

3. Find a fashion forum where people can authenticate the shoes for you if you decide to go through the Ebay, Bonanza, Fashionphile route.

Use these tips to avoid the heartache I did.

When fashion houses turned into corporations beholden they became obligated to the bottom line.   Financial obligations have pushed many designers to ship production overseas to lower costs yet rarely are these lower costs then passed on to consumers.

Case in point: Prada handbags and shoes.  An Italian fashionhouse that traces its roots to 1913, Prada is one of the few players that admits to producing their luxury products in China.

Hidden in the inner crevices of Prada handbags are 'Made In China' labels.  In 2011 approximately 20% of Prada's products were produced in China.

Miuccia Prada claims that"Sooner or later, it will happen to everyone because [Chinese manufacturing] is so good."  What she likely instead meant was "so cheap."

The new GTLD's were announced a month ago with many fashion companies staking claim for  unique domains.   Macy's, Bloomingdales, Chanel, Chloe, Gap, Amazon, Express, Cartier-Richemont, TJMAXX, L’Oreal, Hermès, Gucci, L'Oreal all registered for their own domains and domains for their affiliate companies.   Richemont registered .LOVE.   Surprisingly missing from registrants was Louis Vuitton.

The new domain name program was first introduced in December 2005 and allows organizations to apply to own .ANYTHING and .EVERYTHING.  Due to the cost prohibitive nature of the program, registration will likely be limited to only large organizations.

Organizations will be able to control their own secure dedicated online space, protect consumers by promoting only .brand websites, enhance consumer and government perception of the industry,  and they will need less resources needed to police new second level domain

Companies should also think about defensively registering domains to prevent infringers. They will have to think about domains in relation to their products, domain names and which products will most likely be infringers.

Welcome to a new era in enforcement. 

My previous post highlighted the wonderful designers working with Olympians--Egypt unfortunately has the opposite problems.

Facing an understandably tough year  General Mahmoud Ahmed Ali, the Olympic Committee Chair, commissioned uniforms from a Chinese manufacturer who provided Egypt with fake Nike products.  The uniforms feature marks that infringe not only Nike trademarks but also  Adidas marks-combining both marks on the same product.

For players who already have to play during Ramadan this is most certainly an even bigger insult.

When Nike officials heard of the news, they understandably expressed their concern to which General Ali told them to contact the Chinese factories that had given them such a low bid and that nobody could even tell.

Properly embarrassed by the kerfuffle, Egyptian officials met with Nike representatives for official kits...which the athletes reportedly had to pay themselves to replace at a cost of $300 per uniform.

via

They are not called the heavy weights of trademark enforcement for nothing. In a move that surprises no one, LVMH has appealed Judge Andrew Carters June 18th dismissal of their suit against Warner Brothers.

Judge Andrews ruled that the supposed infringing scene was merely a parody and was protected by First Amendent Free Speech Provisions.  Judge Andrews opined that the 30 second clip, in a nearly hour and a half movie did not tarnish LVMH's brand. Read our summary of that opinion here

Undauntered, LVMH has filed their appeal. No word if they are still seeking the same amount of damages.

In an economic and frankly un-Patriotic gaff, it was revealed last week that the Olympic Uniforms for the United States team, while designed by iconic American designer Ralph Lauren, were produced in China

What an utterly disappointing oversight.  While the design might be questionable, every American should be upset that these uniforms were not produced on home soil.

Outsourcing is a genuine problem in this economy with tech jobs, production jobs and even some legal jobs being sent abroad.  

The unemployment rate in America hovers at an alarming 8% and yet valuable jobs were sent abroad for apparently no reason.  It could not have been expense--it cost a reported $1,945 to produce the men's uniform and $1,473 to produce the women's uniform.

The Olympic Games are a forum to demonstrate the best a country has to offer in every realm.  American Apparel creator Dov Charney has offered his American factories to Ralph Lauren to produce new uniforms for the Games.  While this is wasteful, this should have been considered from the first conversation about production and not when confronted with public outcry and backlash.

Russia, according to Fashionista, is considering producing its Olympic uniform production to the United States.  While I would never suggest that the U.S. follow Russian public policy, I do suggest that the Olympic uniforms be produced in America as a testament to American skill and craft.

On June 29th , U.S. Customs and Border Patrol seized a shipment of watches worth a commercial value of $28.7 million dollars in Laredo, Texas.  Port Director, Sidney Aki, said "this is one of the highest valued seizures in terms of MSRP in the history of the Port of Laredo."

The U.S. Customs officials seized over 4,000 watches bearing the Audemars Piguet and Louis Arden trademarks.  Louis Arden currently has one federally registered trademark in the United States and Audemars Piguet currently owns eleven.

Read more.

It is not news that counterfeiters try to imitate the brand as much as possible  What is becoming alarming is their increased sophistication—particularly with luxury watches.

Counterfeit watch makers have mastered the look, weight and even the smell of luxury Swiss watches.  The Swiss themselves seem to be surprised at how close the counterfeit watches come to the genuine item.  The items have become so precise that the differences can only be viewed under a microscope by industry professionals.  Which essentially means the average consumer would never know.

These are not the watches being sold for $100 where the purchaser knows they are likely buying a fake.  Rather, these watches are being sold to unwitting consumers who spend THOUSANDS believing they are buying a genuine luxury item.  These items are often sold through eBay and other secondary platforms.

“Counterfeiting costs the watch making industry billions each year,” Nick Hayek, head of Swatch Group, recently told the 20 Minuten newspaper. “The worst thing about it is that these copies are being made more and more professionally.” 

The counterfeit market is likely exploding even more due to the prices of Swiss watches. “If I was producing a cheap watch, honestly you have to go to China,” said Jean-Marc Jacot, CEO of Parmigiani, whose average price is $70,000. “You have no solution. It is too expensive to produce in Switzerland.”  via. Now that the Chinese have proven that they are competition not only for inexpensive watch makers but for luxury watchmakers as well, the Swiss are bound to be nervous.

While some, like Jean-Claude Biver, CEO of Hublot, are happy that their products are being imitated [he and Prada CEO Patrizio Bertelli must be reading from the same book] most are not.

Legally, in order to claim that watches are Swiss made, Swiss law mandates that 50% of the "movement" be produced in Switzerland.  Some would like to see it increased to 80%.

The Swiss rely on their heritage and reputation of superior craftsmanship for sales.  How will marketing change when the Chinese are producing products that are just as accurate at much lower rates?

Read more here.

In Britain, women are buying small jars of tester paint to paint the soles of their heels red in order to imitate Christian Louboutin heels, according to The Daily Mail.

Sales have increased by 40% for colors such as Flame and ShowStopper as women seek to imitate the look of Louboutin's.

The Brits aren't the only ones DIY-ing shoes.  A YouTube search reveals over 100 videos showing women how to achieve brillant red soles at home. A friend told me she sees DIY soles every day on young girls while commuting to work.

But does this conduct rise to the level of US trademark infringement?  After a hearty discussion with other fashion law bloggers, the answer is no.  Why?  Because these women are not trying to profit from their DIY.  They simply want people to THINK they are wearing Louboutin's.

This could lead to legal action if the paint makers, aware of what consummers are doing, start to advertise their products while referencing Louboutin's.  Or if someone starts a business DIY-ing soles for women.

Louboutin is also working on a makeup line, that could very well include a nail polish.  Will women start using his nail polish to paint their soles instead of Home Depot paint?  How will Louboutin address this when it inevitably arises?

Two unexpected players in the fashion world have combined their forces for a joint Christmas venture that will debut December 1st according to WWD.    Target and Neiman Marcus will both sell a collection that is designed for both stores by 24 CFDA Designers.  Target frequently works with premier designers to bring fashion to the masses but this is the first it has done with a premier retailer.

The collection will be sold at all Target and Neiman Marcus stores with prices ranging from $7.99 to $499.99 with each designer creating at maximum three pieces.

Designers include Carolina Herrera, Derek Lam, Diane von Furstenberg, Jason Wu, Marc Jacobs, Oscar de la Renta, Tory Burch, Alice + Olivia, Altuzarra, Band of Outsiders, Brian Atwood, Eddie Borgo, Judith Leiber, Lela Rose, Marchesa, Philip Crangi, Prabal Gurung, Proenza Schouler, Rag & Bone, Robert Rodriguez, Rodarte, Skaist-Taylor, Thom Browne and Tracy Reese.  

According to Karen Katz this will not dilute the Neiman Marcus brand because "The product and the design is so terrific. For Neiman Marcus, it’s so unexpected.” 

The two retailers will also donate $1 million dollars to the CFDA to support American fashion.

I look forward to viewing this collection in both stores.

Cartier has sued two Beijing jewelery companies for trademark infringement and unfair competition.

Cartier alleges that the two companies use the Cartier mark in their adverts and claim to sell genuine Cartier products. The  Beijing companies operate on the Yihaodian online supermarket.  

Cartier, a French jeweler, was founded in 1847 and is world reknown for their superior product.  They are seeking 1.1 million yuan ($172,623) in damages.

This should be an interesting case as luxury brands have had difficulty enforcing their trademarks in China.  

Read more.

Counterfeiters in China have been using genuine receipts of Hermès products purchaed in Hong Kong and selling their fake products over the internet.  Hong Kong law protects consumer privacy and forbids  purchase records from being accessed via receipts.

According to Patrick Thomas, CEO of Hermès, over 80% of all Hermès products sold online are fake.  A fake seller can make on average $1,570 on the sale of every fake Hermes bag.  Genuine Hermès products can be purchased through such re-sellers as Malleries and Fashionphile in the US.

Source

A study conducted by The World Luxury Index has concluded that the most searched for handbag around the world is Coach!  Take that snobs!  This is good news for Coach which was the first mid-luxury handbag brand to openly source their production to China.  The brand I am surprised is not Top 10 on the list? Céline--what with their ubiquitious shoppers and luggage totes.

The Institute also concluded that based on the number of searches per country, that the British are the most "purseobessed"--which might explain the inclusion of British brand Mulberry on the list.

The most interesting point in the study is that the Japanese are losing their taste for Louis Vuitton, where Louis Vuitton is the 9th most searched handbag. Japan is the only country where Louis Vuitton is not in the top 5. This is surprising especially because Louis Vuitton was the first high-end handbag designer to sell directly to Japan and Japan has been a strong market.  Maybe it is because 85% of Japanese women already own a Louis Vuitton bag.  This might be the time for a new brand to enter the market and entrance the Japanese.

Longchamp is the preferred handbag in France while the Brazilians prefer Céline, Balenciaga and Goyard. Read more here.

For most basketball recruits, their most precious possession is their skill on the court.  For Kentucky Wildcat Anthony Davis his eyebrows are part of his money making empire.  The subject of many jokes, Anthony Davis wants to be the only person to capitalize on his bushy brows.

He has acquired four trademarks that reference his unibrow.   From June 04-June 07, Davis filed four trademarks for his name, FEAR THE BROW, BROW DOWN, and RAISE THE BROW for products ranging from t-shirts to aftercare products. 

Source

Twelve individuals,  many of them Hermès employees, were recently arrested by the French police.

The handbags were thought to be produced in France and then distributed worldwide in Europe, Asia, and the United States.  In essence, Hermès employees appeared to have been moonlighting and producing Hermès products outside of the factory.    The estimated value of the merchandise seized is upwards of $19 million dollars. 

the company told WWD "This operation concludes a one-year investigation following an Hermès complaint based on clues and abnormal behaviour identified through the house's internal monitoring systems.  Hermès is very satisfied with the efficient and diligent collaboration established with the national gendarmerie in this case and reiterates its relentless commitment to fighting counterfeiting. This action puts an end to the fraudulent project in progress."

I never thought this blog would ever enter divorce law but alas here we are. A hedge-fund manager in NY [which means he must be somewhat wealthy] wants his ex-wife's shoe collection to be factored into their divorce proceedings.  Claiming he was duped, and that she hide her shoe collection from him, he now wants a fraction of her $1 million dollar shoe colletion. As one shoe lover to another: solider on Beth!  Via the NYPost below

A wealthy hedge-fund boss is suing his poker-pro ex-wife for a reason that would be like a stiletto to the heart of any pump-crazy New York gal — her shoe collection.

Daniel Shak claims Beth Shak never told him about her stockpile of 1,200 pairs of designer shoes when they divorced three years ago.

The finance titan, who had shared a Fifth Avenue pad with Beth, claims that she hid the collection from him — possibly in a “secret room” — and that its value may entitle him to hundreds of thousands of dollars more in their divorce settlement.

In addition to her fame as a World Series of Poker player, Beth is known as one of the world’s top footwear aficionados. Her collection has been featured in media outlets from The Post to MTV’s Cribs.

She even has an image of a Christian Louboutin stiletto tattooed on a private area of her body.

Yesterday, she told The Post Daniel would have to have been the most clueless hubby ever to be unaware of her hobby.

“I’m shaking my head over this whole thing,” Beth said. “He is saying he didn’t know the closet in our master bedroom existed.”

Daniel claims he found out about her shoes only last year.

“In the summer of 2011, Daniel became aware that Beth owned and failed to disclose an extensive . . . collection of Christian Louboutin shoes . . . and other high-end designer shoes and bags,” his suit says.

“Dan trusted his wife and was not inspecting his home to try to find inventory or ‘secret rooms.’ ”

He’s asking a court near their old family home in suburban Philadelphia for an accounting of her shoes, a source said.

He estimates her collection at $1 million and says he’s due at least 35 percent of that.

Daniel, who runs SHK Asset Management, reportedly lost millions in the gold market last year. A poker lover himself, he was reached at a card table yesterday but declined to comment.

Beth has said her collection includes 700 pairs of shoes by the designer Christian Louboutin. “To me, his shoes are like fine art,” she told The Post last year.

The Import Specialist Enforcement Team at U.S. Customs and Border Protection seized almost $200,000 worth of Levi jeans in Laredo, Texas.

The officers selected a shipment of jeans for examination and found that the jeans infringed upon the Levi Strauss trademark.  Levi Strauss has had federal trademark rights since 1972.  

The shipment contained 96 boxes with 2,850 pairs of jeans.  

Left: Fake Levi's recovered in shipment.  Right: Genuine Levi jeans

Source

Mary Katrantzou is a Greek-born fashion designer best known for her remarkably vivid digital prints.

Recently, she collaborated with TopShop in an effort to bring her dynamic prints to the masses.  She even designed a series of prints for French handbag company Longchamps.

Yet, despite this collaboration Katrantzou is still being copied by high street designers.  Most noteably, Zara. 

Zara dresses for Spring 2012

The designer said "I've gone through stages. First, flattery - a high street store is copying you! Then a sense of injustice - someone has taken your idea and made it in a form that is not as good quality. But you can't take it personally; everyone is being copied, and I don't have the budget to sue." 

This problem is the type of problem the Innovative Design Protection and Piracy Act was meant to prevent.  Perhaps, she could search for some copyright protection for her three dimensional prints.

Source

An 80s rocker is suing Nike and Kevin Durant for the use of the moniker 'Durantula.'  The rocker has played with bands such as Public Enemy, The Aliens,  and The Next Big Thing. 

Mark Durante has a trademark for the term 'Durantula' under registration No.3748227.  The trademark is under Class 09 for " Audio recordings featuring music; Digital music downloadable from the Internet; Downloadable MP3 files, MP3 recordings, on-line discussion boards, webcasts and podcasts featuring music, audio books and news broadcasts; Downloadable musical sound recordings; Downloadable ring tones, graphics and music via a global computer network and wireless devices; Downloadable video recordings featuring music; Musical sound recordings; Musical video recordings.

Nike and Durant are not using the nickname in the same class as Durante's trademark.  The Court will have to consider the likelihood of confusion between 'Durantula' for musical recordings and 'Durantula' for sports products and apparel. 

According to WWD, Nicole Ritchie will be launching a fragrance in September called Nicole.    The perfume will be sold at 200 retailers worldwide with prices starting at $55.  

According to Fashionista, Yves Saint Laurent or YSL is considering dropping Yves and becoming just Saint Laurent.

This re-branding idea is being spearheaded by new creative director Hedi Slimane. His reasoning?  He wants to lose the history of Yves Saint Laurent and take the brand into a new direction.  What is more confounding is that it is rumored that YSL CEO Bernard Arnault is considering the change.

It is surprising because the allure and romanticism of history is what drives luxury brands like YSL.  Marketing spends millions each year connecting the brand to its past, in order to convince the consumer that they are purchasing quality goods that harken to times where luxury was rare and everything was handmade.

YSL has also taken many steps to protect and trademark their brand in many variations-YSL, Yves Saint Laurent, and Yves Saint Laurent Rive Gauche. There are at least 70 trademarks registered, none with Saint Laurent.  This move is also surprising because very few people refer to the brand in its entirety.  It is typically referred to as only YSL, which seems modern and forward to us. 

While it is understandable that each new creative director wants to put their unique stamp on the brand, so far it seems like we are lost in Slimane's translation of YSL.

The Navajo Nation has finally decided to sue Urban Outfitters for use of the word Navajo in their Navajo Hipster Panty and Navajo flask.  The Navajo were particularly disturbed by the flask being sold since alcohol is prohibited within the Nation. They view the products as 'derogatory and insulting'.  

Under the the Indian Arts and Crafts Act,  it is a crime to produce a product that claims that it's Indian made when it is not.   This act sounds much like Section 2(e)(1) of the Lanham Act which prohibits deceptively misdescriptive marks from federal registration.

Urban Outfitters removed the word 'Navajo' from the offending items yet continues to use patterns and materials traditionally associated with the Navajo people.

Urban Outfitters has said that they view the word Navajo as a trend and not as intellectual property-"Like many other fashion brands, we interpret trends and will continue to do so for years to come," he said. "The Native American-inspired trend and specifically the term 'Navajo' have been cycling thru fashion, fine art and design for the last few years." via

Yesterday, Judge Andrew L. Carter of the USDC for the SDNY granted Warner Bros. Entertainment their Motion to Dismiss against Louis Vuitton Malletier [LVM].  Judge Carter held that the handbag used in the film, The Hangover, was afforded First Amendment protection because it was used in an artistic [noncommercial] manner by Warner Bros. and that its use was not explicitly misleading.

The Hangover with at least $580 million gross is the highest grossest R-rated comedy ever.  In an airport scene, Alan, a buffoonish and almost child-like character says “Careful…that is Lewis Vuitton” in reference to his keepall.

The keepall was not in fact a genuine Louis Vuitton keepall but a counterfeit bag mimicking the trademarked LV toile monogram made by Diophy.  LV claimed that customers believed that the bag shown was a genuine LV bag and that LV sponsored or approved of the use of the  Diophy bag.  LV believed that the use of the bag blurs and tarnishes LV marks “by associating LV with [the]  poor quality and shoddy reputation of the cheap products bearing the Knock-Off Monogram Design.”

Warner Bros. contended that they were protected under First Amendment parody, non-commercial use standard as established in Rogers v. Grimaldi, which held that the Lanham Act is inapplicable to artistic works as long as 1) the defendant’s use of the mark is artistically relevant and 2)  its use is not explicitly misleading as to the source or content of the work.

LV meanwhile argued that artistic relevance is an issue of fact that required discovery and that Warner Bro.’s could not use First Amendment as a shield when they used a third party’s infringing product.  LV wanted to depose Warner Bro.’s and the film’s creator to determine if they intended to use a genuine or counterfeit LV.

The Louis Vuitton Keepall in dispute as seen in a recent LV ad starring Mohammed Ali.

Judge Carter dismissed LV’s complaints by pointing out that the artistic standard is purposefully low and that Warner Bro.’s use of the bag was “funny….snobbish….and ironic.”  The Judge found it highly unlikely that “an appreciable amount of people would [even]  notice that Alan’s bag is a knockoff.”  The bag is displayed in the background for less than 30 seconds of the film.  Judge Carter also noted that few people would take Alan’s statements about a designer handbag seriously.

Maybe the Judge should make a cameo in Hangover III.

Read the opinion here

Louboutin has suffered another disappointing international ruling, this time against Spanish retailer, Zara. La Court de la Cessation affirmed a Court of Appeals decision which would allow Zara produce red-soled shoes and also granted Zara relief of $3,600 from Louboutin.

Louboutin filed the case against Zara for counterfeiting and unfair competition due to not only the red soles but also the upper portion of the Zara shoe which they claimed imitated Louboutin 'Yo Yo's.

When the case was first heard, the Court ruled favorably for Louboutin but subsequent appeals reversed that ruling.  The Court held that there are no proven risk of confusion due to the shoe's disparate price points.  The Court also noted that because Louboutin's trademark application did not include a specific pantone color, it was too vague of a trademark to enforce.  Despite the ruling, Alexis Mourot, group chief operating officer and general manager of Christian Louboutin, said the company was determined to continue defending its red soles, according to WWD.

Louboutin is currently awaiting a ruling from the Court of Appeals in New York for his current lawsuit against Yves Saint Laurent.

via

Louis Vuitton has added another weapon in their arsenal against trademark infringers.  The International Trade Commission issued a decision in Louis Vuitton's favor which would severely limit the ability of certain  companies from importing counterfeit Louis Vuitton into the United States.  The order prohibits the general importation of unlicensed Louis Vuitton products.  Violators will be charged 100 percent of the products value.

Louis Vuitton, represented by Steptoe & Johnson, filed the complaint last year alleging that a certain Chinese couple was using shell companies to sell counterfeit Louis Vuitton in the United States.  Some of the shell companies are choicehandbags.com, T&T Handbag, The Inspired Bagger of Dallas, Texas, and House of Handbags Lose Angeles, California. 

The order allows customs officials to refuse any products that infringe specific Louis Vuitton trademarks, or any products that are confusingly similar to the marks, or are misleading as to source, origin, or sponsorship. 

Louis Vuitton will be required, each year, to affirm that status of their trademarks and that they are indeed still actively being used in commerce, once this order takes effect.  An importer has the burden of proof to prove they are not importing goods that violate the order or infringe Louis Vuitton's registered trademarks.

It will be interesting to see which luxury brands seek a similar order from the ITC.  Read the order here.

Source: Bloomberg

The battle over e-commerce is brewing in England.  Sir Phillip Green, the owner of TopShop, has reportedly sent a cease and desist letter to the owners of Asos for the impermissible use of the TopShop name and logo on the Asos website.

Asos, a formidable e-retailer, also operates Asos Marketplace, an ebay-esque platform which allows users to sell their clothing to other users.  

According to Green, "I feel Asos misrepresents our brand, which is registered to us. They claim to sell new Topshop clothes when they don’t. That’s an infringement of our trademark. This is not the first time it has happened. They would love to sell Topshop. They’ve had many conversations with us, but I’ve always said we are not interested. We have our own website.” 

Green is probably even more irked since Asos has been growing tremendously in the past few years.  In 2011 Asos overtook Topshop in Twiter followers.  Asos is also a leader in retailers with Facebook stores.  Asos saw international sales grow by 93% in the last quarter of 2011 and total sales rose by 46%.

I foundthis artice via FOXNEWS.  I think it is extremely interesting especially considering the new French campaign to stop women from buying counterfeit items.  It appeals directly to their vanity.  But does this mean efforts to stop counterfeiters and their buyers are useless if they're just inate liars?

Dan Ariely, a Professor of Behavioral Economics at Duke University, is publishing a book entitled, “The Honest Truth About Dishonesty: How We Lie to Everyone—Including Ourselves.” In it, he reveals research he and his colleagues conducted that provides useful insights into the psychological forces which drive lying. 

One of the more fascinating revelations is that women who carry fake Louis Vuitton or Tory Burch handbags or wear fake Cartier jewelry, are more likely to lie, cheat or steal than other women. 

Could that really be the case? Could handing over $50 for a replica handbag that should really cost $500 or $1,000 really signal deeper moral failings? Doesn’t everyone lie sometimes? 

Most of us, Ariely explains, do indeed lie, sometimes. But the research he presents includes the fact that those of us who are willing to wear our lies around our necks (e.g. fake Burberry scarves) or carry them on our arms (e.g. those fake designer bags) are especially untrustworthy. 

When you think about it, that makes psychological sense. People who buy knock-offs are willing to lie on multiple levels. 

First, they’re willing to cheat the companies who created the designer items—and hold the intellectual property related to them—out of money that’s legitimately due them. Because those companies not only came up with unique—sometimes iconic—designs, they invested in advertising and marketing that made their brands household names. They harnessed genuine creativity and employed lots of people to make that happen. 

Second, they’re willing to lie to everyone who gets a glimpse of their fake handbags or necklaces or sunglasses and thinks that they have the style sense, or the money, to select and buy those items. They’re desperate enough for that facade of style—that mask of chic—to break the law to achieve it. And they know what they’re doing isn’t above-board. After all, the fraudulent goods they’re buying are often sold by shady street dealers or fly-by-night websites. 

Third—and probably most toxic—they’re able to lie to themselves. Because they can almost forget that they’re perpetrating a bit of a scam whenever they head out with a handbag that fools people into believing they have something they don’t and are something they’re not. They have the ability to think of themselves as entirely upstanding, when they’re ripping off companies who have to report real earnings to real stockholders and make real profits—or really go out of business. 

Seen this way, the folks who lie just a little by buying knock-offs sound a little less innocuous than they might, otherwise. Still, though, they aren’t Bernie Madoff—making off with billions and leaving investors bankrupt. They aren’t Clark Rockefeller—the fake Rockefeller who fooled everyone into thinking he was a member of the legendary family. 

No, they aren’t. But they are very distant cousins—and there are a lot more of them, capable of doing lots of harm, when taken together. And that’s really the psychological and economic point Ariely is making: Madoff isn’t our real problem. It’s the rest of us. The millions willing to lie and cheat and steal a little add up to a bigger economic and social problem than the outliers who take duplicity to the next level. 

So, next time you see the stitching on a Louis Vuitton bag and realize it doesn’t quite look like the real deal, it’s fair to conclude that the person carrying it isn’t quite the real deal, either—and act accordingly. 

Dr. Keith Ablow is a psychiatrist and member of the Fox News Medical A-Team. Dr. Ablow can be reached at info@keithablow.com.

Read more: http://www.foxnews.com/opinion/2012/06/05/are-women-who-carry-fake-designer-handbags-big-trouble/#ixzz1x452iXXt

The Victoria Secret 100 Way Bra.  Touted as "The Bra that Does It All" with 44 slots which allows for complete customization, Victoria's Secret created a "bra-volution" when they introduced their 100 Way Bra in 2007.  Or did they?

On June 05, Katrina Plew and Victoria Secret settled their case for an undisclosed amount, right before their trial was set to begin.  Plew, represented by Reed Smith, filed suit in 2008, against Victoria's Secret.  Necessity is the mother of invention, and Plew claims she thought of her idea for a highly customizable bra in 1999 while getting ready for a christening.   In 2003 Plew was granted a patent for her bra with serial number 6,733,362

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While waiting for the USPTO to grant her patent, Plew approached several retailers to market her bra, including Victoria's Secret.  She solicitied these companies with DVDs, emails and phone calls.  In 2006, she had an interview with Victoria's Secret which they later cancelled.

In 2008, Victoria's Secret started to manufacture their 100-Way Bra.  Plew filed suit in 2008 and Victoria's Secret filed a Motion for Summary Judgment which was rejected by the court. Plew v. Limited Brands, Inc., 729 F.Supp.2d 629 (S.D.N.Y. 2010).   The Court recognized that "though the loops are arguably placed in different locations between the cups, the straps can be arranged for similar silhouettes. Neither bra allows the hooks to touch the skin of the wearer. In light of these similarities, a reasonable juror could determine that the structures are equivalent and thus find in Plaintiff's favor on her infringement claim." Id. 635.

Score one for the little guy.

A Double Jeopardy FashionFaceoff first. We have someone competing with themselves!  When did Alicia Keys wear her 140mm Christian Louboutin Ulona best?

She instagrammed a photo of herself today in a pair of Rag & Bone jeans and her heels [with an oddly coordinating bicycle].

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She first wore the Ulona in 2010 while in Brazil shooting the music video for 'Put It In A Love Song' with Beyonce.  Both she and Beyonce wore outfits by Boxing Kitten.

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VERDICT: A tie!  I think she wears this style very very well.  I am more partial to the Brazil shoot though because it looks like she is having a great time.

I really should stop with my bad puns but it's Tuesday....which should be bad pun day.  Moving on, on May 07, 2012 the TTAB sustained FRUIT OF THE LOOM’s 2(d) Registration Opposition of the mark BODY FRUIT.   Applicant had filed an intent to use application in Class 25 for the mark BODY FRUIT for “footwear, headwear, jackets, pants, shirts, shorts…”

FRUIT OF THE LOOM opposed BODY FRUITS registration on several grounds including

1. That it was the owner of several famous marks
2. 2(d) Likelihood of Confusion
3. Section 43(c) Dilution

The Court first held that the FRUIT OF THE LOOM mark was not famous.  Despite providing evidence that it had advertised its mark since 1937 in magazines such as Women’s Wear Daily, Ebony, Elle, and The New York Times, FRUIT OF THE LOOM committed a too often seen error—they failed to provide evidence of their market share relative to their competitors or evidence of their sales.  While they provided print evidence of advertisements and recognition by media outlets that their brand was recognizable the court stated that “such activities fall short of demonstrating the extent to which such activities and achievements translate into widespread recognition of…opposer’s…mark...among  the general public.”  

Because the court found that the mark was not famous, the dilution claim did not succeed.  The Court did find  however that the mark was strong.

The TTAB used three  other DuPont factors-similarity of goods, similarity of channels of trade and similarity of the marks to refuse BODY FRUIT registration and sustain the opposition.

This outcome is great for Fruit of the Loom because according to WWD, they looking to expand into the premium market through  collaborations with Bloomingdale’s YES department and with celebrity stylists.  They hope to create buzz for their new line through “celebrity seeding,”-gifting items to celebrities to increase public awareness.  This TTAB decision is important to FRUIT OF THE LOOM’s hopes of brand expansion.

Read the decision here 

Michelle Tanner has finally grown up.  The Olsen Twins, Mary-Kate & Ashely, were named by The Council of Fashion Designers of America the 2012 Womenswear Designer[s] of the Year for their line The Row.  Launched in 2007 and named after Savile Row in London the line is described as upscale, luxurious updated version of wardrobe classics.  Shop the collection here.

Menswear Designer of the Year was awarded to Billy Reid.

Accessory Designer of the Year went to Reed Krakoff, which was must deserved.  The President and Executive Director of Coach, Reed Krakoff's eponymous line has developed a reputation for supremely crafted shoes and handbags.  See our pinterest and Net-a-Porter post for more from Reed Krakoff.

The Swarovski Award is given to emerging talent where Joseph Altuzarra won in the Womenswear category.  Although Phillip Lim is well known for dressing Michelle Obama he won in Menswear.

Tabitha Simmons won the Swarovski Award in Accessory Design.  I discovered Tabitha Simmons last year when I lusted, and still do, after these beauties.

Tommy Hilfiger won the Lifetime Achievement award.  A full list of winners can be found on WWD.

Perhaps DVF felt sorry for all of her loyal customers who were envious that their New York counterparts were able to enjoy her New York sample sale where items are marked down as low as 70%.  The New York sample sale takes place at 260 Fifth Street.  For those of us unable to attend the sample sale will be online as well!  Register today at DVF SAMPLE SALE. if you become an insider you are able to preview the sale before Tuesday.

Per WWD, the Comité Colbert, the France Luxury Goods Association, revealed their newest anti-counterfeiting ads.  Counterfeit goods cost France an estimated $7.5 billion a year.  Enjoy!

Patrizio Bertelli, the controversial and admittedly hot-tempered chief officer of Prada, recently stated on Bloomberg Television that "fake goods aren't totally bad."  The husband of Miuccia Prada, Bertelli is often credited as the source that capitulated Prada from a moderate size family business to an international fashion house. 

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According to Bertelli, Prada does not "want to be a brand that nobody wants to copy."   Should fashion houses start using counterfeit production as a measure of their desirability?  Maybe Bertelli should send Louis Vuitton a memo.

Francesca Eastwood, the daughter of none other than Clint Eastwood, is [happily] in the public eye after burning a supposed $100,000 Hermes Croc Birkin.  She and her boyfriend, coincidentally, star on an E! reality tv series about her family.  Francesca and her boyfriend claim that the bag was burned for "artistic" reasons, perhaps as a statement that people spend too much on disposable and trivial goods.

If only they had used an ACTUAL Birkin.  Hermes, the famed French company that still prides itself on artisanal craftsmanship, was recently ranked the 2nd most valuable luxury brand.  I suspected this was all a stunt and after consulting with my Hermes experts, my suspicions  were confirmed.  

Francesca's bag as shown on Instagram

WHY HER BAG IS FAKE

1. That PRICE.  While known for their exorbitant prices, the Birkin that Francesca is carrying could not have cost $100,000.  While croc is one of the most expensive materials in luxury goods a Birkin of that size and color will not reach that price unless it has diamond hardware.  Which we can clearly see, Francesca's does not have.  A Birkin of that size, color, and material would retail for $50,000-$55,000, a healthy amount, but half the price quoted by  Francesca

2.  That SHEEN.  When I saw a picture of the 'Birkin' I felt the urge to 'Let My Soul Glow' [Coming to America reference for those that do not know].  That might be the shiniest EMBOSSED crocodile I have ever seen. Genuine crocodile is never that shiny.  This is nothing more that embossed patent leather--the same type of pattern used at Forever21.

3. That SHAPE.  The proportions are wrong for a Birkin of that size.  The handles are too long  and the flap is too big for the size and shape of her 'Furkin'

Conclusion:  Try again Frannie.  But this might be better than the sex tape that your E! counterparts have used to acquire fame.  

We anxiously await to see if Hermes will take any action....

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The three year legal battle between the high end luxury brand and the mass consumer brand has finally come to an end as Federal Judge Shira Scheindlin awarded Gucci $4.7 million dollars in damages.  Though Gucci was the winner, they were not awarded the full $221million dollars they sought, according to WWD.

The Gucci suit is grounded in five trademarks they claimed Guess has infringed; Stylized G"; "Interlocking GG"; "Repeating Interlocking GG"; "Green -Red-Green Stripe"; "Script Gucci" and also the tradedess "Diamond Motif."

Gucci's Resgistered Trademarks Source: USPTO

Guess's defense was that the average buyer would never confuse Guess with Gucci due to the price difference and the fact that Gucci had waited seven years to exercise their rights [latches].   Because Gucci could be described as an "aspiration brand,"  Guess attorney Daniel  Petrocelli,  of O'Melveny & Myers,  claimed that there was no deliberate scheme to "knock off" Gucci the way Gucci alleged and that they were not due $221 million.  "The numbers don't add up," Petrocelli told the judge. "If there was a scheme, it failed miserably."

The judge found that Gucci, represented by Arnold & Porter, had successfully proven dilution under the Lanham Act, 15 U.S.C. §1125, and granted Gucci an injunction preventing Guess from using  Quattro G pattern and the green-red-green stripe and other trademarks. They were denied an injunction for prohibiting the Guess script.  There are notable similarities between the two brands:  both brands start with 'G' have five letters and the first two letters are the same.  The similarities between the claimed trademarks and tradedress claims cannot be mistaken.

Paul Marciano of Guess said that the company will continue to use the quattro "G" pattern-just without the G's.

Gucci's sister brand YSL is currently embroiled in litigation against Christian Louboutin for trademark infringement as well. 

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Pinterest might be the newest form of e-commerce for the retail world.  The social media site, described as an online visual pinboard, allows users to "pin" images they like and share them with other users. Pinterest is behind only to Facebook and Twitter as the third most popular social media site and has amassed 13 million unique users in 10 months.  Pinterest boasts a 145% user increase daily since January 1, 2012. 

Pinterest seems to fill a niche that Facebook and Twitter are unable to fill.  Women tend to trust Pinterest for recommendations more than they do Facebook and Twitter.  The average purchase price from Pinterest is $80 which is more than Twitter and Facebook combined.   Over 50% of Pinterest users are female, have an average income between $50,000-$75,000, and have some college, bachelors, or graduate degree.  They also tend to view facebook as a purely social networking site and turn to blogs and pinterest for recommendations on new products, purchase recommendations, and product reviews. 

Source

Pinterest is exciting for retailers because pinned images links back to the original site.  Several retailers such as West Elm, The Gap, and Nordstrom, already have official Pinterest boards. 

According to Fiona Dias, chief strategy officer of ShopRunner.com " …anyone who has advertised on Facebook has been disappointed, as [many] ads are rarely clicked on.”  As a very recent "pinner" Pinterest allows me to remember and organize the things I like, something Facebook and Twitter do not allow me to do.  I even found the graphs for this article on Pinterest.

If Pinterest becomes the newest form of e-commerce how will that effect the copyright issues that many have alleged against the site? Only time will tell if Pinterest can maintain its momentum and become a real competitor to Facebook.   

Follow us on Pinterest here :)

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Luxury shoppers prefer Nordstrom to other luxury retailers according to a recent survey.  The Luxury Institute conducted a recent study among American households with incomes of $150,000 or more and the Seattle based retailer, which has roots dating from 1901, outranked its competitors.  Nordstrom out ranked Barneys and Bergdorf Goodman in customer service, store personnel and in-store experience amongst customers.  The affability of in-store personnel undoubtedly contributed to 36% of surveyors reporting that they had visited a Nordstrom store within the last 12 months, while only 7% had visited Barney's and even less visited Bergdorf's.

Luxury retailers understand that their customers demand, expect and value 'experience' when they shop.  Nordstrom has a long and noted history of emphasizing customer service which has obviously helped the retailer make gains in the first quarter and satisfy and retain customers.  96% of the surveyors would visit Nordstrom again and 94% would recommend the chain to their family and friends.

Nordstrom is hoping to extend this customer service experience online and has invested a substantial amount to online services and technology.  They offer free shipping which other luxury retailers such as Bergdorf Goodman, Neiman Marcus, Barney's and Bloomingdales do not offer.  Noting that free shipping is expensive, Nordstrom President, Pete Nordstrom, has stated that Nordstrom is willing to explore this area in order to attract more customers.  As an faithful Nordstrom shopper, I can say that free shipping and great customer service have kept me coming back.  

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The Department of Justice seized $1.5 million dollars worth of  proceeds from the sale of counterfeit sports goods and jerseys, the Department reported. The seizures came at the conclusion of an investigation into web sites selling counterfeit sports goods that were manufactured in China.

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The DOJ's investigation is a result of Operation in Our Sites which seeks to limit and shut down websites that infringe intellectual property rights.   Operation in Our Sites targets websites selling counterfeit goods such as sunglasses, sports equipment, shoes, handbags, and DVD boxed sets.  As a result of this operation more than 700 website domains that were used to distribute trademarked and copyrighted goods have been seized.

“The seizures we are announcing today are another step forward in our efforts to disrupt and disable those engaged in intellectual property crime,” said Assistant Attorney General Breuer.  “By seizing the domain names and profits of online counterfeit goods operations, we are protecting consumers and sending a message to criminals that we will use every tool at our disposal to stop them.”

According to WWD, French brand Longchamps is taking affirmative steps to increase their presence in China and they started last night by hosting a party celebrating their first Chinese spokeswoman, Gao Yuanyuan.

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Longchamps faces a battle to stake its claim in China as the Chinese market is rampant with their counterfeit items.  Longchamps produces some of its bags in China which undoubtedly contributes to the proliferation of counterfeits.  The most counterfeited item is their Le Pliage tote; a relatively inexpensive nylon bag with leather handles which the brand started to produce in 1993. 

                              Source

  Despite the relatively low price point of the pliage tote, many Chinese customers buy the counterfeit because they claim that they cannot tell the difference between the fakes and the Longchamps version and because the fakes are 1/5 of the retail price.  The Chinese have even coined the term “dumpling bag” to describe a pliage tote instead of the brand name. 

Longchamps will have to increase brand awareness through marketing campaigns which should emphasize its exclusivity and desirability to the Chinese public.  Perhaps they will focus more on their higher end items rather than the le pliage tote.  We cannot wait to see their future campaign.

Ralph Lauren recently won its challenge to cancel a registered trademark claiming likelihood of confusion and dilution of their mark.  Ralph Lauren is a famous mark [as established by the Court] which made a plausible challenge that much more difficult for 'Poor Fallen Polo Boy' (P-FOB as I have dubbed him) to mount (no pun intended-I promise).  When a mark is famous, it is entitled to broad protection.

Source RL mark on left, P-FOB on right

P-FOB admitted that they planned on using their mark in the same class as Ralph Lauren [bad move] but claimed that their image was a parody.  Their mark was meant to mock the elite.  I guess seeing the elite fall off their high horses in rough economic times is their comeuppance in t-shirt form. In any event, the Court disagreed and cancelled their registration.  Too bad--I did get a chuckle out of their mark.

read the full opinion here

According to WWD the famed shoe designer will be expanding and launching a makeup line to reach consummers sometime next year.  This move is quite unsurprising as the 'Louboutin Manicure' has existed since 2007 and was even worn by Adele to the 2012 Grammy Awards.

Source: Source; Source

Louboutin, who recently celebrated his 20th year of business, has dabbled in brand expansion before with handbags.  Louboutin famous for his red soles inserts a bit of whimsey into his handbags and wallets by making the lining red. This also serves undoubtably as brand reinfocement to his clientele. 

Source:http://www.bagfuss.com/wp-content/uploads/2011/08/Christian-Louboutin-Sweet-Charity-Optic-Studded-Leather-Clutch-5.jpg

His licensing agrement with Batallure Beauty will create beauty products under the name Christian Louboutin Beauté.  His beauty line, like his shoes, is expected to be sold at high end retailers. While Louboutin has not revealed any specific details about the line, he has said that he is drawing inspiration from the bust of Nefertiti.  How appropriate since her name translates to "the beauty has come."

It will be interesting to see how Louboutin will incorporate his signature red on his packaging.  Will he make the packaging black with red on the inside when you open it?

We at TheSolePursesuit cannot wait to see if Batallure Beauty applies for any tradedress rights.