Christian Louboutin Claims Victory in EU Court Trademark Battle Over Its Iconic Red-Soled Shoes

On Tuesday, June 12, 2018, the European Union’s (EU) highest court, the Court of Justice of the European Union (the CJEU) (La Cour de justice de l’Union européenne), held that French designer Christian Louboutin’s mark consisting of a color applied to the sole of a shoe is not subject to the EU’s prohibition of the registration of shapes. Notably, the CJEU did not follow the February 2018 opinion of an advocate general, who wrote that the red color was intertwined with the shape of the sole.

Louboutin is known for designing high-heeled shoes for women. These are no ordinary shoes, however; over the years, they have become a status symbol because of their red outer soles and hefty price tag. As noted by rapper Belcalis Almanzar aka Cardi B in her hit song “Bodak Yellow”: “These expensive, these is red bottoms, these is bloody shoes. Hit the store, I can get ’em both, I don’t wanna choose.”

But the celebrity endorsements and popularity of the brand have not made obtaining—and maintaining—trademark registrations for the red soles a walk in the park; it has taken a lot of shoe leather. Continue Reading

Dissecting the PIRATE PISS Decision: Why Beer and Rum Are Still Related Goods (in the TTAB’s Opinion) and What Brand Owners Should Do Before Adopting a New Alcohol Brand

For years, the TTAB has affirmed refusals of similar marks covering food and beverage offeringsfinding such goods and services to be related. This includes many TTAB decisions finding that alcoholic and non-alcoholic beverages are related (see the TTABlog for a nice overview).

Patrón Spirits International AG v. Conyngham Brewing Co., Case No. 91226939 (TTAB June 8, 2018) on its face appeared to chart a different course.

In Patrón, the TTAB held in a non-precedential decision that registration of PIRATE PISS for “beer, ale and lager” in Class 32 was permissible, despite Patrón’s prior registrations for PYRAT and PYRAT RUM for “distilled spirits” and “rum” in Class 33. Does this mean that beer and distilled spirits such as rum are unrelated? Not so fast. Continue Reading

Play-Doh Scent is Now a Federally Registered Trademark: Why Brands Should Embrace Non-Traditional Trademarks

Did you know you can federally register a scent as a brand? Hasbro, Inc.’s recent registration of the smell of Play-Doh “toy modeling compounds” has highlighted one of the lesser-known brand categories: scents.

The United States defines a trademark as any “word, name, symbol, or device, or any combination thereof…to identify and distinguish his or her goods.” Trademark attorneys usually short-hand this explanation and note that trademarks are source identifiers – something unique that consumers associate solely with one source. Source identifiers can be words (MCDONALD’S), logos (the Nike Swoosh), colors (pink for Owens-Corning fiberglass insulation), packaging designs (the Coca-Cola glass bottle shape), product designs (the Lego person figurine), store layouts (the Apple Store layout and features), motion (the MGM lion roaring), sounds (the NBC chimes), scents (the Le Vian chocolate smell in jewelry stores), and even flavors (the Original Rainbow Cone, Inc. owns a registration for five flavors of ice cream, arranged in a particular order and sold on a cone). In each case, consumers recognize the visual, auditory, or olfactory reference with a specific provider. Continue Reading

Trade Secret Protection Yields to Washington’s Public Records Act

In a shocking turn of events, the Supreme Court of Washington recently ruled in Lyft, Inc. v. City of Seattle, No. 94026-6, 2018 WL 2437513 (Wash. May 31, 2018), that trade secret protection yields to disclosures required under the Public Records Act (PRA).

This hotly debated dispute began after the City of Seattle passed an ordinance in 2014 that limited the number of active drivers for transportation networking companies, such as Lyft and Rasier (collectively “L/R”), at any given time. Afterwards, the City and L/R came to an agreement whereby L/R would submit quarterly standardized reports to the City that contained information about each ride, including the percentage of rides completed in each zip code and the pick-up and drop-off zip codes. In response to concerns about the confidentiality of the zip code data, the City agreed that it “[w]ill work to achieve the highest possible level of confidentiality for information provided within the confines of state law.” Continue Reading

Why Food & Beverage Brands Should Care About the Crystal Head Vodka Case

Almost everything about Dan Aykroyd’s Crystal Head vodka is unique: according to the company’s website, distilled corn and peaches are mixed with “pristine water from Newfoundland,” then the liquor is filtered through semi-precious crystals known as “Herkimer diamonds.” The unique brand story is matched by the vodka’s packaging, a memorable clear glass skull that stands out visually and on store shelves.

With this much effort put behind the packaging and brand, it’s understandable that Globefill Inc. executives (the company behind the Crystal Head brand) were concerned enough several years ago to file a lawsuit against another company producing a spirit in a similar skull-shaped bottle. Globefill was eventually successful in the case, winning an important trade dress case against their competitor. And while a single win in court isn’t always indicative of a larger trend, food and beverage companies would be wise to learn an important lesson of the Crystal Head vodka case: the importance of protecting intellectual property rights known as “trade dress.” Continue Reading