When you think of Louis Vuitton, you probably think of a trend-setter, a brand that is at the forefront of fashion. In most cases, this is probably true, but recently the fashion behemoth may have been just a little late to the party. The French company is being sued for trademark infringement by an emerging Atlanta-based shoe designer, Antonio Brown’s trademark attorney, who claims that Louis Vuitton has been copying his unique toe plate design and causing consumers to be confused about which design is which.
Brown, a one-time accountant, launched a luxury line of shoes under the brand name LVL XIII in 2013. The shoes have been a tremendous success, boosted in large part by several celebrities sporting Brown’s footwear. LVL XII shoes are distinguished by a metal plate fastened to the toe with the brand name engraved on it. Within the first two months of launch, LVL XIII sold over $500,000 worth of merchandise.
With such quick success, Brown wisely filed a trademark application on the distinctive toe plate design by which his shoes have come to be identified. Brown’s trademark application claims use in commerce of the toe plate design back to August 2013. His toe plate trademark application has not yet matured into a trademark registration, but it seems to only be hung up on a technicality with the Trademark Office. If Brown can overcome the issues raised in the latest office action issued by the USPTO, he should receive a trademark registration on his toe plate.
Trademark registration may mean trouble for Louis Vuitton. The degree of trouble will depend on whether the mark registers on the Principal or Supplemental Register. Registration on the Principal Register means a legal presumption of ownership of the mark and the exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration. Even without a completed trademark registration, through the use of the identifying mark in commerce, Brown may have secured some enforceable common law trademark rights. And with an upcoming federal trademark registration pending, Brown’s case may be further bolstered. Of course, Louis Vuitton could file a Notice of Opposition once the application publishes and oppose the registration.
Brown has filed a federal trademark infringement lawsuit against Louis Vuitton claiming that its “On the Road” sneaker violates LVL XIII’s trademark by using a metal toe plate. Brown claims that this use causes consumer confusion leading consumers to believe that LVL XIII is actually the copycat and that Louis Vuitton must have had it first. This is known as reverse confusion – when consumers are likely to be confused that the smaller company that was actually first to use the mark copied the larger, more well-known company when in fact the opposite may be true. Brown is seeking an injunction to stop Louis Vuitton from selling any more shoes with the toe plate and for damages based on the profits that Louis Vuitton has earned through sales of the alleged infringing shoes.
Setting yourself apart and creating a strong brand that identifies your company is critical in business. Protecting that brand through trademark registration is just as important. An upstart business like LVL XIII can get wiped out without the protection that trademark registration provides.