The Southern District of New York recently booted shoe manufacturer LVL XIII Brands, Inc.’s trade dress infringement suit against Louis Vuitton Malletier S.A. in LVL XIII Brands, Inc. v. Louis Vuitton Malletier S.A.. At issue in this lawsuit was Plaintiff LVL XIII’s claim to exclusive trade dress rights in a rectangular metal toe plate on its athletic shoe and its claim that Defendant Louis Vuitton’s own use of a metal toe plate on athletic shoes created “reverse confusion” in violation of the Lanham Act.

Plaintiff LVL XIII is a start-up luxury fashion company founded around 2012 by a 29 year old entrepreneur named Antonio Brown. In the summer of 2013, Plaintiff’s first prototype luxury athletic shoes were manufactured. Each design featured a metal toe plate with an “LVL XIII” inscription secured to the front outsole of the sneaker by metal screws.LVL XIII shoes

Because Plaintiff was operating on a “shoestring budget,” Plaintiff publicized its shoes by offering them to celebrities and publishing pictures of those celebrities sporting the sneakers on social media platforms like Instagram. Brown’s Instagram account had 50,000 followers viewing pictures of celebrities such as Chris Brown, model Tyson Beckford, rappers Nas and Jim Jones, and some pro athletes wearing Plaintiff’s toe plate shoes.

To help secure the exclusive rights to the toe plate trade dress, Plaintiff filed an application with the United States Patent and Trademark Office (“USPTO”) for a mark that “consists of a shoe toe design featuring a rectangular metal plate across the front of the shoe toe with the wording LVL XIII engraved in the metal plate, and two small screws in the corners of the metal plate.” The USPTO issued a preliminary refusal to register the trade dress on the ground that it was not inherently distinctive. Plaintiff suspended prosecution of the application pending resolution of the instant litigation.

Defendant Louis Vuitton is a venerated French luxury merchandise company founded in 1854. Louis Vuitton has enjoyed enormous commercial success in the United States for over 100 years and is the owner of numerous registered U.S. trademarks and trade dress designs, and has been advertised extensively in mass-market fashion magazines such as Vogue, Vanity Fair, Elle, and many others.

Plaintiff’s claims arose from Defendant’s use of a metal toe plate on its own athletic shoes at its Men’s Spring/Summer 2014 fashion show. Defendant’s “On The Road” (or “OTR”) shoes also use a metal toe plate.Louis Vuitton Shoes

The lead designer of Defendant’s OTR line testified that his inspiration was the Converse brand “Jack Purcell” sneaker, worn by James Dean in a famous photo.

James Dean

An identifying feature of the Jack Purcell sneaker is the “smile,” a thin, dark rubber inset curving upwards in the sneaker’s rubber toes.

Brown first learned about Defendant’s OTR sneaker in March 2014 after he was approached by a number of people asking him whether his company was collaborating with Louis Vuitton. Eventually, Plaintiff sued, claiming federal trademark infringement, federal false designation of origin and unfair competition, federal trade dress rights, New York deceptive business practices, common law unfair competition, and related claims.

The parties cross moved for summary judgment; the court granted Louis Vuitton’s motion and dismissed the case in Defendant’s favor in a 107-page decision. In granting Defendant’s motion for summary judgment, the court held that “LVL XIII has not established secondary meaning or a likelihood of confusion; has not shown bad faith or a likelihood of confusion; and has not shown material deception or public harm,” thereby failing to establish its claims.

Trade Dress Generally

Trade dress refers to characteristics of the visual appearance of a product or its packaging that signifies the source of the product to consumers. Like trademarks, the Lanham Act legally protects a product’s trade dress.

Product shape/configuration trade dress is registrable on the United States Patent and Trademark Office’s Principal Trademark Register. However, consistent with the Supreme Court’s decision in Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000), to register a product/shape configuration mark on the Principal Register or otherwise claim protection, the applicant or plaintiff must show that the trade dress has acquired distinctiveness (or “secondary meaning”). Secondary meaning may be shown by length of use of the trade dress, significant advertising expenditures, or factual testimony regarding recognition of the trade dress as a source indicator. But the gold standard of proof of secondary meaning − how consumers perceive the trade dress − is consumer survey evidence.

Expert Witness Preclusion

The SDNY began by granting Louis Vuitton’s motion to preclude Plaintiff’s expert’s report and testimony pursuant to Daubert v. Merrell Dow Pharmaceuticals, 509 U.S. 579 (1993). First, the court agreed with Louis Vuitton that the expert was not qualified to opine on secondary meaning, finding that although the expert may have been qualified in certain areas of fashion history and intellectual property law, he was unqualified to testify as to the central, empirical issue in the case, namely whether Plaintiff’s trade dress had acquired secondary meaning.

The expert did not conduct a marketing analysis or secondary meaning survey. Additionally, the Court found that the expert made certain unhelpful and unreliable assumptions concerning Plaintiff’s customer base. In addition, the expert’s definition of the relevant consumer market lacked record foundation and his characterization of Plaintiff’s target market as consisting predominantly of urban males was conjecture.

Moreover, the expert’s methodology was unreliable. The expert purported to use “Visual Culture Studies [VCS] methodology,” described by the court as a field that “employ[s] the tools and insights of, inter alia, semiotics/linguistics, aesthetics, anthropology, social history, and law” to “engag[e] with . . . ‘visual cultures,’” such as the “‘culture’ of contemporary luxury consumer goods.” The court held that VCS methodology does not withstand scrutiny under Daubert. It cannot be tested or challenged in any objective sense and the expert did not preserve, much less produce, the vast majority of the materials on which he purportedly relied. Finally, the expert did not show that his methodology has been recognized by the courts or gained acceptance within the relevant expert community. On the contrary, he acknowledged that the VCS methodology was at odds with “traditional measures used to determine secondary meaning” and the “completely haphazard methodology sometimes used by federal courts” to determine whether a trademark is inherently distinctive.

Secondary Meaning

As noted above, the lawsuit was based on the claim that Plaintiff’s use of the toe plate was protectable trade dress. The court brought that claim to heel. The court began by noting that the Supreme Court and Second Circuit have instructed that courts must exercise “particular ‘caution,’ when extending protection to product designs.” That is because, unlike word marks and product packaging, whose “predominant function [is often] source identification,” product design “almost invariably” serves another purpose: “to render the product itself more useful or more appealing,”

Thus, it is now black-letter law that product design always requires a showing of secondary meaning to be protectable. Courts routinely look to a number of factors in determining whether there is secondary meaning, including: (1) advertising expenditures, (2) consumer studies linking the mark to a source, (3) unsolicited media coverage of the product, (4) sales success, (5) attempts to plagiarize the mark, and, (6) length and exclusivity of the mark’s use.

Advertising ExpendituresAdvertising expenditures are regarded as “indirect evidence of the possible effect that advertising may have on consumers’ association of the trade dress with the source of the product.” In this case, it was undisputed that Plaintiff did not engage in any traditional paid advertising. And although there may have been evidence of successful “new media” marketing such as celebrity photos on Instagram, there was no evidence that any promotional materials called attention to the trade dress as an indication of source.

Consumer Surveys. Plaintiff did not conduct any consumer surveys, and its expert testimony was excluded. Defendant, however, retained an expert, whose survey showed that, at most, 3% of respondents associated the trade dress as source identifying.

Unsolicited Media Coverage. Plaintiff supplied only minimal evidence of unsolicited media coverage − only 12 social media posts, none of which were from the relevant time period. Moreover, the court noted that it was not clear that the “likes” and comments on Plaintiff’s and Brown’s social media pages, which invite people to “follow them,” qualified as “unsolicited” coverage. Finally, the “accolades” on which Plaintiff relied all consisted of general praise for Plaintiff’s sneakers − none refer to the toe plates affixed to them.

Sales Success. Plaintiff’s evidence also fell short with respect to sales success. Of the 1,000 pairs of sneakers it manufactured for its first collection, only half sold, generating $141,241 in revenue. The remainder was returned to be donated.

Attempts To Plagiarize The Mark. “Evidence that a mark has been widely copied is persuasive evidence of secondary meaning because it demonstrates that the mark has become a ‘strong source identifier in the eyes of the purchasing public.’” The key question is “whether the copying was done deliberately, so as to benefit from [the plaintiff’s] name and good will.”

Plaintiff submitted no direct evidence that Louis Vuitton copied its design, but argued that the “timeline of events leading up to the 2014 Runway Show” was “circumstantial evidence” of Louis Vuitton’s plagiarism. On the contrary, the principal designer of the OTR shoe testified without contradiction that he had never heard of Plaintiff or its sneakers. The court thus found that Defendant had plausibly explained its independent conception of its own toe plate.

Length And Exclusivity Of Use. Plaintiff’s trade dress was in use for merely eight months before Defendant launched its OTR shoe. The Court found that that duration was far too brief to support a claim of secondary meaning.

In reviewing these factors, the court found that “not one relevant factor supports a finding of secondary meaning. Rather, each decisively favors [Defendant]. Given LVL XIII’s minimal advertising expenditures and sales success, the dearth of unsolicited media coverage calling attention to the [trade dress], the absence of attempted plagiarism, and the ubiquity of metal shoe accents in the marketplace, no reasonable juror could find that … consumers had come to perceive the [trade dress] as an indicator of source.”

Likelihood Of Confusion

Finally, the court considered Plaintiff’s claim that Defendant’s use of its metal toe plate created a likelihood of confusion or “reverse confusion” under the Lanham Act. Whereas “forward confusion” involves the misimpression that the senior user is the source or sponsor of the junior user’s products, “reverse confusion” exists where a junior user “selects a trademark that is likely to cause consumers to believe, erroneously, that the goods marketed by the [senior] user are produced by the [junior] user.”

Reverse confusion is analyzed in the same manner as the more typical “likelihood of confusion” claim, using the numerous factors set forth in Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961). Those factors are: (1) the strength of the plaintiff’s mark; (2) the degree of similarity between the plaintiff’s and defendant’s marks; (3) the competitive proximity of the products sold under the marks; (4) the likelihood that the plaintiff will bridge the gap; (5) actual confusion; (6) the defendant’s good faith, or lack thereof, in adopting its mark; (7) the quality of the defendant’s product; and (8) the sophistication of the plaintiff’s customers.

Balancing the factors, the court found no likely confusion − reverse or otherwise. The Plaintiff’s trade dress was weak, Defendant’s metal toe plate looked different from Plaintiff’s, there was insufficient evidence of actual consumer confusion, the price points of the goods were high and therefore more carefully selected by consumers, and the Defendant adopted the trade dress in good faith. On balance, the court held that “[e]ven if LVL XIII had established that the [trade dress] acquired secondary meaning, its Lanham Act claims would still fail because it has not shown a likelihood of confusion.”

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In many respects this case may seem to be an unremarkable, though strongly worded, Lanham Act trade dress case. The court firmly dismissed the Plaintiff’s trade dress claims, would not allow the Plaintiff’s expert witness report and testimony, but otherwise the case may seem to have little novelty.

However, in addition to the general warnings about the need for actual consumer survey evidence and reliable experts, a trend about the type of evidence necessary to support a claim of secondary meaning is discernible. Indeed, this case follows this blog’s comments on The North Face Apparel Corp. v. Sanyang Industry Co., Ltd., 116 USPQ2d 1217 (TTAB 2015), where the Board explained that generally showing advertising expenditures or publicity for goods bearing a design mark was not enough. A party who wishes to claim that a mark has acquired secondary meaning needs to show the extent to which sales and advertising amounts reflect use of the mark itself, rather than the product in general.

The Court here did not credit publicity in new media platforms such as Instagram. While it is doubtful that “look-for” publicity on Instagram would have saved the day for Plaintiff, it is clear that mere recognition on social media platforms, without accounting for how much of that recognition relates particularly to the trade dress, as opposed to the product itself, is insufficient to support a claim of secondary meaning.