In a recent backlash to their trade mark filing, Valentino has argued their Rockstud shoe should be registrable as a trade mark. In their response to the U.S. Patent and Trademark Office, Valentino use Louboutin’s success of registering their famous red sole as a trade mark to argue their shoe design should be afforded the same protection.

BACKGROUND

Valentino is a luxury goods Italian brand founded in 1960, and a leading international fashion brand. It has over sixty trade mark applications filed with the U.S. Patent and Trademark Office mainly consisting of the name of the brand in various stylised formats and variations of their famous ‘V’ logo.

In October 2019, Valentino applied to register a number of shoe designs from their popular Rockstud collection as trade marks. One shoe from the collection that Valentino filed is the leather Rockstud pump as pictured below

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The application sought to register a “three-dimensional configuration of a shoe with a single ankle strap and T-strap and collar which are adorned with pyramid shaped studs”. Of note, the “colour is not claimed as a feature of the mark”.

ORNAMENTAL REFUSAL

However, in February 2020 the Office held that the design of the Rockstud pump does not function as a trade mark. The Office stated the shoe design “consists of a nondistinctive product design or nondistinctive features of a product design” and therefore does not function as a badge of origin to Valentino [3]. The Office therefore refused Valentino’s application.

The Office went on to say that the design is “merely a decorative or ornamental feature of [Valentino’s products]” [4].

An ornamental refusal is a statutory ground of refusal where the Office can refuse an application on the basis that the use of the mark is only decorative or ornamental and therefore does not clearly identify the source of the goods and distinguish them from the goods of others (ss 1, 2, and 45 Lanham Act 1946,15 U.S.C. §§1051-1052, 1127).

ACQUIRED DISTINCTIVENESS

The Office further stated the mark would not be registrable without “sufficient proof of acquired distinctiveness” [3].

Acquired distinctiveness can be claimed under section 2(f) of the Act on the basis that because of “the extensive use and promotion of the mark, consumers now directly associate the mark with the applicant as the source of those goods” (USPTO guidance). The applicant may submit actual evidence to the Office that the applied mark has acquired distinctiveness including advertising and promotional materials, and consumer statements indicating recognition of the mark.

The Office held that without actual evidence “[Valentino’s] allegation of five years’ use is insufficient to show acquired distinctiveness because the applied-for mark is highly ornamental and common on shoes” [6].

VALENTINO PUSHES BACK

In early August, Valentino’s lawyers responded to the Office in a filing over 200 pages long to argue the design of the Rockstud pump should be registrable as a trade mark. Valentino presented a wealth of evidence in the filing to support their arguments.

Therefore, among other things, Valentino argued the mark has enjoyed widespread advertising and promotion and provided evidence of the shoe photographed on countless celebrities and its coverage in the widespread media [11]. Valentino also argued the shoe in question has generated over $152 million in sales since its launch in 2010 [12]. Since 2010, Valentino asserted the use of the shoe has been exclusive and continuous [11].

LOUBOUTIN’S RED SOLES

Valentino’s main legal argument applied previous lawsuits whereby Louboutin has successfully argued their red soled shoes have acquired distinctiveness (see here) and successfully registered the red sole as a trade mark (see here), as pictured below.

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In the US, colours per se can be registered as a trade mark if they have acquired a secondary meaning (for example, through distinctiveness) and if they are non-functional.

In the highly anticipated decision, the Second Circuit Court in 2012 held Louboutin’s red sole has, in fact, “acquired [the necessary] secondary meaning as a distinctive symbol that identifies the Louboutin brand” [4].

The Court went on to state: “We see no reason why a single-color mark in the specific context of the fashion industry could not acquire secondary meaning―and therefore serve as a brand or source identifier―if it is used so consistently and prominently by a particular designer that it becomes a symbol, ‘the primary significance’ of which is ‘to identify the source of the product rather than the product itself” [26].

Valentino similarly argued their Rockstud pump has enjoyed a similar success to that of the Louboutin red sole and therefore should be registrable as a trade mark on its acquired secondary meaning.

LOOKING FORWARD

The filing in question raises important practical points regarding claiming acquired distinctiveness of a mark, and the scrutiny threshold of the Office required to prove this.

The Louboutin decision was ground-breaking for both the fashion and legal industries. The decision ultimately paves the way for trade mark registrability based significantly on the element of consumer perception, rather than its functionality. Whether Valentino can rely on Louboutin to extend the Court’s finding that a colour can be registerable as a trade mark, to argue the same of a three-dimensional configuration with ornamental features may come down to its competitive effects over the monopoly.