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Ale House Alleges Trade Dress Infringement

Miller's Ale House, Inc. v. Boynton Carolina Ale House, LLC, 745 F. Supp. 2d 1359, 1371 (S.D. Fla. 2010) aff'd, 10-15140, 2012 WL 6629202 (11th Cir. Dec. 20, 2012).

Miller’s Ale House, Inc. brought a claim of trade dress infringement against potential competitor Boyton Carolina Ale House, LLC, alleging infringement of their restaurant’s interior elements, including their décor, layout and red-colored logos. The court noted that the restaurant’s features, including a rectangular bar with booth seating and high top tables, were common for sports bars and restaurants. The court held that because none of the restaurant’s claimed elements of trade dress were unique, nor had these features acquired secondary meaning in the mind of the public, Plaintiff failed to establish the necessary acquired or inherent distinctiveness to prevail on a trade dress infringement claim. They also held that Plaintiff could not base a claim of trademark infringement on competitor’s use of “ale house,” because the term is generic and maintains a nationwide consumer perception as describing a place that serves ale.

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Trademark Protection of Louboutin’s Red Shoe Outsoles

Christian Louboutin S.A. v. Yves Saint Laurent Am. Holdings, Inc., 696 F.3d 206 (2d Cir. 2012).

In the highly scrutinized case Christian Louboutin S.A. v. Yves Saint Laurent Am., Inc., French footwear designer Christian Louboutin attempted to claim trademark protection over the use of a particular shade of red on the outsoles of his high fashion shoes. Louboutin sued competitor Yves Saint Laurent when they used this same shade of red on their own shoes. Yves Saint Laurent responded by counter-claiming for cancellation of Louboutin’s trademark registration. The United States District Court for the Southern District of New York denied Louboutin’s motion for preliminary injunction, citing the trademark functionality doctrine. On appeal, the court held that because Louboutin deliberately tied this shade of red to his product, he created an identifying mark that was strongly associated with his brand. In light of this design feature’s contrast with the shoes’ upper color, and its recognition by the consuming public as a distinctive symbol of the Louboutin brand, it had acquired secondary meaning and qualified for trademark protection.

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Primarily Geographically Misdescriptive

In re Miracle Tuesday, LLC, 695 F.3d 1339 (Fed. Cir. 2012).

The TTAB denied Applicant’s attempt to register the mark “JPK PARIS 75” in connection with handbags and related fashion accessories, claiming that the mark was primarily geographically misdescriptive under the Lanham Act. The Board claimed that because Applicant currently resides in the United States, the dominant “PARIS” portion of the mark would mislead consumers to believe that the goods they were purchasing originated in Paris, a location that is famous for its fashion designs. Applicant appealed the decision, arguing that there was an actual connection between the goods identified in the application and Paris, because Applicant was Parisian and had lived there for twenty-two years. The Court of Appeals affirmed the Board’s decision, denying Applicant’s registration and holding that the “PARIS” portion of the mark created an association between the goods and Paris that did not exist, because the goods did not actually originate in Paris. Furthermore, they held that the mark’s geographic misrepresentation was material and would deceive the consuming public to believe that Applicant’s goods came from Paris.

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Likelihood of Confusion

The Ninth Circuit overturned a grant of summary judgment in Fortune Dynamic Inc v Victoria’s Secret Stores Brand Management Inc. (Case 08-56291, August 19 2010), a case that highlighted the fact intensive inquiry that is likelihood of confusion. In this case, Victoria’s Secret gave away and sold pink tank tops with the word “delicious” displayed across the chest as part of a sales promotion. Fortune sued for trademark infringement based on its incontestable federal registration for DELICIOUS for footwear. Victoria Secret was granted summary judgment that there was no likelihood of confusion that consumers would confuse the source of the respective products. The Ninth Circuit reversed, holding that there were questions of fact regarding likelihood of confusion and that the “fair use” defense offered by Victoria’s Secret (that they were not making “trademark use” of DELICIOUS) should be decided by a jury.

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