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Louboutin Wages New Red Sole Trademark, Design Patent Lawsuit

Post Time:2023-05-09 Source:thefashionlaw.com Author: Views:

Christian Louboutin is waging a new red sole-centric lawsuit, accusing a fellow footwear maker of infringing its famed trademark, as well as its common law trade dress rights and a number of its design patents, by way of a collection of copycat shoes. According to the complaint that it filed with a New York federal court on May 5, Louboutin asserts that in “a blatant attempt to trade off the renown of the Christian Louboutin brand,” Vinci Leather, Inc. has been manufacturing and marketing knock-off Louboutin shoes – from pumps bearing its source-indicating red sole to sneakers that mimic its Spiked Sneakers trade dress – with the aim of confusing consumers, particularly in a post-sale scenario.

In furtherance of a growing scheme of infringement and despite its knowledge of Louboutin’s exclusive rights in (and trademark registrations for) the red sole mark, Louboutin alleges that Vinci has been making a selection of high-heel pumps that “utilize a red sole identical to” Louboutin’s, which it offers up in brick-and-mortar locations in Maryland and Virginia, and on its website. Vinci escalated its infringement activities “in or around the fall of 2022,” per Louboutin, when it began selling shoes (namely, the “Zibo” and “Winlux” shoes. styles) that consist of “shark-teeth reminiscent soles” that are “nearly identical” to the soles on Louboutin’s Loubishark line of sneakers, for which Louboutin maintains two design patents (Patent Nos. D934,539 and D934,536).

And at the same time, Louboutin asserts in the new lawsuit that Vinci also started offering up sneakers that infringe upon its Spiked Sneakers trade dress. Louboutin alleges that “the overall appearance and particular combination of elements of the Spiked Sneakers” – namely, “conically shaped spikes are applied to the toe bed [of footwear] covering substantially the entire toe bed area, with the spikes positioned in rows and columns forming a substantially regularly spaced spike pattern” – has “become well- known in the fashion industry and among consumers, who have come to associate their distinctive design exclusively with Louboutin.” As a result of its “substantial effort and investment in its Spiked Sneakers,” and their commercial success, Louboutin claims that it has amassed common law trade dress rights in the appearance of the sneakers, which Vinci is infringing by way of its lookalike Efes shoes.

The goal of Vinci’s use of the famed red-sole trademark and offering of copycat versions of its protected footwear designs, according to Louboutin? To “mislead consumers into believing that [Vinci’s] infringing shoes are made, approved, sponsored or endorsed by Louboutin, that [Louboutin] and [Vinci] are somehow connected” – or to “otherwise to benefit from the recognition and goodwill of [Louboutin’s] well-known shoes.” Beyond that, Louboutin alleges that Vinci’s footwear is “also created with the specific intent to create post-sale confusion as to the source of [its] footwear, creating an imitation of Christian Louboutin shoes that cannot be distinguished [after the initial point of sale].”

The goodwill that Louboutin has built up in its red sole trademark and Spiked Sneakers trade dress is being “put at risk by [Vinci’s] appropriation and use of the foregoing in connection with its business and in connection with the infringing shoes,” Louboutin maintains.

Moreover, the French footwear company argues that Vinci’s “continued use of the infringing [red] sole, of designs nearly identical to that of the Spiked Sneakers trade dress and substantially similar to those [embodied in its patented Loubishark designs] in connection with a competing business is likely to continue to cause confusion in the marketplace, because purchasers and potential purchasers will assume that the goods sold by [Vinci] emanate from or are authorized by, licensed by, endorsed by, associated with, or otherwise connected with Louboutin and/or Louboutin’s goods.” Specifically, Louboutin claims that Vinci’s sneakers appropriate “the novel, ornamental features set forth in [its Loubishark patents] such that an ordinary observer, giving such attention as a purchaser usually gives, would find [its] and [Vinci’s] designs to be substantially the same and would be deceived into believing that [Vinci’s] shoes are the same as [its] patented designs.” In short: “By virtue of [Vinci’s] use of an essentially identical design, potential purchasers will assume, incorrectly, that the infringing shoes are [Louboutin’s].”

With the foregoing in mind and in light of the parties’ failure to resolve this out of court (as Vinci’s did not respond to Louboutin’s cease-and-desist letters) , Louboutin sets of claims of trademark infringement, trade dress infringement, unfair competition, deceptive trade practices, and design patent infringement. In addition to monetary damages, Louboutin is seeking injunctive relief to bar Vinci from “manufacturing, distributing, shipping, advertising, marketing, promoting, selling or otherwise offering for sale,” etc. footwear that infringes its red sole mark, Spikes Sneakers trade dress, and Loubishark patents, and is seeking an order from the court that Vinci “deliver up to [Louboutin’s] attorneys for destruction all goods, labels, tags, signs, stationery, prints, packages, promotional and marketing materials,” among other things.