By Thomas Long, J.D.
Two fashion design companies could not go forward with trademark infringement claims against each other with respect to the use of a metal plate on the toe of "luxury" men’s sneakers, the federal district court in New York City has decided. LVL XIII Brands, Inc. ("LVL XIII") failed to establish that Louis Vuitton Malletier S.A. and Louis Vuitton North America, Inc. (together, "LV") infringed LVL XIII’s trademark rights in a metal toe plate by using an allegedly similar plate on LV’s "One the Road Sneaker" because LVL XIII could not establish that its toe plate ("TP") had secondary meaning or that confusion was likely. LV’s infringement counterclaims based on LVL XIII’s alleged infringement of LV’s monogram mark also failed because, in the court’s view, no confusion was likely to result from LVL XIII’s use of its "LVL XIII" mark. All claims and counterclaims were dismissed on summary judgment, and the case was ordered closed (LVL XIII Brands, Inc. v. Louis Vuitton Malletier S.A., September 13, 2016, Engelmayer, P.).
Marks and Trade Dress at Issue
LVL XIII’s first line of luxury sneakers was launched in November 2013; they sold at prices between $495 and $1,200, with most priced between $495 and $595. The shoes featured the TP, a rectangular metal toe plate, with the wording "LVL XIII" engraved on it, secured to the front outsole of the sneaker by metal screws. LVL XIII had tried, but so far had failed, to register the TP with the USPTO as a mark.
LV was a well-known manufacturer, seller, and distributer of luxury merchandise, including handbags, luggage, apparel, shoes, watches, jewelry, and other fashion accessories. Its products featured the famous "Initials Logo," which consisted of a stylized "L" and V" presented, in a Roman-like font, as a single, interlocking image, with the "V" overlapping the italicized "L" on a downward angle from right to left.
Infringement Claims and Counterclaims
LVL XIII’s claims for infringement under the Lanham Act, as well as related claims under state law, arose from LV’s use of a metal toe plate on its On the Road Sneaker ("OTR Sneaker"). The OTR Sneaker was designed and developed in June 2013; the product hit the market in March 2014. LVL XIII filed suit against LV, asserting that confusion was likely to result from the metal plate on the OTR Sneaker. LV counterclaimed, alleging that the "LVL XIII" inscription on the TP infringed LV’s Initials Logo. Both parties filed motions for summary judgment.
LV’s Motion for Summary Judgment
The court held that LV was entitled to summary judgment on LVL XIII’s Lanham Act claims because LVL XIII had not established that the TP had the requisite secondary meaning or that a likelihood of confusion existed.
Secondary meaning. As product design trade dress, the LP could not be inherently distinctive, and therefore it could not be protectable without a showing of secondary meaning, the court noted. LVL XIII failed to establish secondary meaning. In the court’s view, not one relevant factor supported a finding of secondary meaning; all of the factors decisively favored LV. LVL XIII’s advertising expenditures and sales success were "minimal." There was a dearth of unsolicited media coverage calling attention to the TP, and there was no evidence that LV deliberately copied the design. Metal shoe accents were "ubiquitous" in the marketplace. The court concluded that no reasonable juror could find that, by March 2014 (when the OTR Sneaker was released), consumers had come to perceive the TP as an indicator of source. LV presented survey evidence showing a lack of secondary meaning, and LVL XIII failed to produce survey evidence to the contrary. Because LVL XIII did not show that the TP acquired secondary meaning, it could not succeed on its Lanham Act claims, the court said.
Likelihood of confusion. Even if LVL XIII had established that the TP acquired secondary meaning, its Lanham Act claims would still fail because it did not show a likelihood of confusion. The competitive proximity of the respective products and marks weighed in favor of LVL III, but the other Polaroid likelihood of confusion factors "lopsidedly" favored LV. Both parties’ trade dress consisted of a metal toe plate affixed to the outsole of a men’s sneaker. However, the mere fact that two brands used metal toe plates did imply an association. The toe plates would have to be sufficiently similar for consumers to assume that they originated from the same source or sponsor. That was clearly not the case here, the court said. There were virtually no points of commonality between the parties’ toe plates. They had many differences: LVL XIII’s was rectangular, with sharp 90-degree edges; LV’s was a trapezoid, with soft rounded edges. LVL XIII’s was adorned with an "LVL XIII" inscription and two screws; LV’s was bare, with no literal element or adornment. LVL XIII’s was of a golden or copper hue; LV’s was gray or silver.
LVL XIII did not present survey evidence as to actual consumer confusion. Instead, it relied primarily on 12 anecdotes of oral communications made to LVL XIII or its principal and three text messages. As to the anecdotes, most involved inquiries by fashion industry professionals whether LVL XIII had collaborated with LV on the OTR Sneaker; such inquiries were arguably premised upon a lack of confusion between the products such as to inspire the inquiry itself, in the court’s view. Moreover, they were not representative of the typical consumer. As to the text messages, two were sent by a friend or former colleague of LVL XIII’s principal and did not reflect actionable confusion. Although one message arguably showed confusion, in the aggregate, the record evidence of "actual confusion" was de minimis.
There was zero evidence that LV copied the TP—much less that it did so with the goal of capitalizing on LVL XIII’s reputation. Quite the contrary, the court said, LV’s evidence was that (1) the OTR Sneaker’s designer had never heard of LVL XIII or its sneakers before this lawsuit, and (2) LV’s design team acted in good faith to avoid infringement—including by soliciting the advice of LV’s in-house counsel and modifying its design to distance it from a third-party’s product.
The sophistication of LVL XIII’s consumers could be inferred from the high price points of its sneakers, according to the court. However, the marks at issue were easily distinguishable, so a reasonable juror could only conclude that this factor favored LV.
The court therefore held that there was no likelihood of confusion between the parties’ toe plates, and that a reasonable juror could not so find. This provided an additional basis for rejecting LVL XIII’s Lanham Act claims.
LV’s Infringement Counterclaim
LV contended that LVL XIII’s use of its "LVL XIII" word mark was likely to cause confusion with LV’s Initials Logo. The court disagreed. There was no question that the Initials Logo—and its stylized use of the initials "L" and "V" was a very strong mark; however, that did not mean LV had a broader exclusive right to use the non-stylized "LV" letter combination. LV offered no evidence that it had used those initials in a non-stylized form, so there was no basis to conclude that they had acquired secondary meaning in that context. On the other hand, LVL XIII supplied evidence of seven third-party registrations for trademarks in the apparel or accessory industries that incorporated the "LV" letter combination. Therefore, the court concluded, a reasonable juror could not find that the "LV" portion of the Initials Logo, removed from the stylized typeface and particular entwined configuration of the letters, was is distinctive. This weighed against a likelihood of confusion finding.
The parties’ marks were similar in that they both used "LV" in a Roman-like font; however, any similarity between the parties’ marks was more than offset by their differences, particularly the obvious visual distinctions between the two logos. In the court’s view, at least some consumers could interpret "LVL XIII" as meaning "Level 13," further distinguishing that mark from the Initials Logo. There was no evidence of actual confusion, and little, if any, evidence that LVL XIII adopted its mark in bad faith. LVL XIII’s principal testified that because "level thirteen" would have been "too long" to fit on a toe plate, he referred to a website listing acronyms to select an abbreviation for "level." LVL XIII had made efforts in promotions and marketing to instruct consumers that its mark was pronounced "Level 13." On balance, the court determined, the likelihood of confusion factors favored LVL XIII to the extent that confusion was unlikely as a matter of law. Accordingly, LVL XIII’s motion for summary judgment on LV’s counterclaim was granted.
The case is No. 1:14-cv-04869-PAE.
Attorneys: Joel Geoffrey MacMull (Goetz Fitzpatrick LLP) for LVL XIII Brands, Inc. Jonathan Daniel Lupkin (Lupkin & Associates PLLC) and Hannah Yeon Mee Jurowicz (Barack Ferrazzano Kirschbaum & Nagelberg LLP) for Louis Vuitton Malletier S.A. and Louis Vuitton North America, Inc.
Companies: LVL XIII Brands, Inc.; Louis Vuitton Malletier S.A.; Louis Vuitton North America, Inc.
MainStory: TopStory Trademark NewYorkNews
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