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

Who Knew “Hon” was so Important to Baltimore? Trademark Registration Sparks Protests.

A rather surprising headline in The Baltimore Sun caught my eye recently – “Demonstrators protest `Hon’ trademark in Hampden“.  A protest over a trademark? 

It turns out that people will protest a trademark when they believe it takes away their right to their own local culture.  If you’re from Baltimore, then you may know something I didn’t – that “hon” is a local expression in Baltimore that refers to a stereotype of local women originating in an earlier era – according to Wikipedia,  “Between the 1950s and 1970s, it was common to see working class local women dressing in bright, printed dresses with out-dated glasses and beehive hairdos.” 

I’ve quickly brushed up on the history of this important term and how it came to be a trademark, to the chagrin of native Baltimoreans.  Denise Whiting opened Cafe Hon in 1992 and later started using it on “Honfest” and on various items for sale.  She obtained a trademark registration for the CAFE HON logo (pictured above) in 2005, and on the word HON in 2007.   Apparently it took at least 3 years for the news of the registrations to reach Baltimoreans, because this protest took place last week.  Has broadband not made it to Baltimore yet?

According to the Sun article, about 50 people showed up to protest in front of Whiting’s store, Hontown.  They held up signs that said things like “You Can’t Trademark Our Culture Hon” and my personal favorite, “Honicide: Life on 36th Street”.  Nobody threw any rocks and bottles, but it was a trademark protest nonetheless.

January 2, 2011 Posted by | Uncategorized | , , , , , | 1 Comment