Trademark Musings

Thoughts on trademark issues by Laura Winston

Sole-Searching – Footwear as a Trademark

This is the drawing that appears in Christian Louboutin’s trademark registration for red soles on shoes.  Only the red sole is the trademark; the drawing of the rest of the sandal is there to show placement of the trademark.

These shoes are a little too pricey for me (ok, a lot too pricey, not to mention that I can’t handle such a heel height for more than about 5 minutes).  But these are among the shoes of choice for celebs like Jennfier Lopez, who wrote a song called Louboutins, as well as one-named people like Beyonce and Madonna, and three-named people like Sarah Jessica Parker. 

Now Yves St. Laurent is selling shoes with red soles, and Louboutin has sued in federal court in Manhattan for an injunction and at least $1 million.  On the one hand, having the trademark registration creates a presumption that Louboutin’s red sole trademark is valid, so it may not be easy for YSL to defend against this.  On the other hand, YSL will likely counterclaim that Louboutin’s registration should be cancelled on the ground that the red sole does not identify Louboutin as the source of red-sole shoes but rather that the red sole is “aesthetically functional”, meaning that its attractiveness has led to its commercial success and that this functional feature is not protectible as a trademark.  If this does not settle early, al ot of experts stand to make a lot of money testifying as each side tries to prove its case.  Mr. Louboutin told the New Yorker, “I selected the color because it is engaging, flirtatious, memorable and the color of passion.”   Does this show that it identifies Louboutin as the source, or does it make the red sole aesthetically functional?  The footwear industry will be watching this one.

April 11, 2011 Posted by | Uncategorized | , , , , , , , , | Leave a comment

Hostess with the Mostest? Or Leastest?

Ah, Hostess snack cakes.  Although my mother more often bought Drakes Cakes (causing me to gag on many a dry and crumbly Devil Dog), I still have fond memories of the Hostess products that I used to bum off my friends.  Although Twinkies were highlighted so wistfully by Woody Harrelson in the movie Zombieland earlier this year, it is the Hostess Cupcake which got me musing today.  According to the Hostess web site,  the Hostess cupcake turns 90 this year, although it was not until 1950 that a Hostess baking executive added the white filling and memorable white swirl.  But alas, Hostess did not protect its distinctive trade dress, and many bakeries now offer their version (often larger, like we need it) of a cupcake with the same white swirl.  Even Entenmann’s has now come out with an Enten-minis cupcake that has a (slightly different) white swirl. 

The Hostess web site does strive to address this issue and remind consumers that it invented the white swirl: “While others have tried to capitalize on the popularity of this ubiquitous decoration, the squiggle which features seven loops on every CupCake – is unmistakably Hostess”, the cupcake page states.  Unfortunately for Hostess, though, while consumers may always think of a Hostess cupcake when they see the swirl on a non-Hostess one, I strongly suspect that they still purchase the other one (and eat it all).

December 22, 2009 Posted by | Uncategorized | , , , , , , , , | Leave a comment