Wave Goodbye to that Mark

By Tommas Balducci [March 19th, 2013] 


In early January, Lululemon Athletica lost their appeal to the TTAB over the registration of the wave design shown below.

The TTAB, affirming the decision of the Examining Attorney, held that the wave design was merely an ornamental decoration and that the public would not perceive the applicant’s mark as an indicator of source. The TTAB stated that such a mark could only warrant trademark registration if the applicant could show the mark had inherent or acquired distinctiveness, or that the applicant has used or registered the design in a non-ornamental manner for other goods or services.

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Borat’s Memorable Swimsuit is Cited for Rejection

By Catherine Kim [May 1st, 2012] 


Sacha Baron Cohen is known for his notorious role in the movie Borat. Despite the movie’s positive reception by some and outright rejection by others, many can simply agree that one of the infamous scenes of the movie was where he wore an extremely unique, and albeit revealing, one-piece swimsuit. Apparently someone from the U.S. Patent & Trademark Office remembered this swimsuit from Borat and used this reference to reject a patent application for a “Scrotal Support Garment.”

Inventor Donald R. Quinn first filed an application to patent this apparatus in 2009. According to the Hollywood Reporter, Quinn described his invention as “support devices for male genitalia, and particularly to a scrotal support garment that provides support for the scrotum for patients having ailments or medical conditions affecting the genitalia or groin in order to relieve pain or discomfort.” <Read more>

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Christian Louboutin Appeals Trademark Decision

By Connie Gibilaro [October 25th, 2011] 

Picture yourself at an event in an elegant room at the Pierre or at a table in a vulgar New York City club. In both places, you will probably spot at least one person wearing them. The lacquered red soles catch your eye, and you instantly wonder whether the owner has a trust fund or spent an entire pay check in order to afford them. It doesn’t matter if they are covered in ten yards of faux ostrich fur. All anyone cares about is the red sole. The red sole screams, “Women, be jealous! Men, be impressed! I am chic and powerful. My shoes say so.” Although most fashion savvy people might have bet their lives that Christian Louboutin’s red sole is a legitimate trademark, Judge Victor Marrero ruled otherwise in August 2011.

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Don’t Tread On Me!

By Lindsey Harriman [April 9th, 2011] 


The infamous red soled shoe designer Christian Louboutin SA, put on the gloves yesterday against Yves Saint Laurent for selling shoes with red soles that are “virtually identical” to its own.  In the suit, filed in federal court in Manhattan yesterday, Louboutin seeks a court injunction against YSL’s sale of the shoes and damages of at least $1 million. (Christian Louboutin SA v. Yves Saint Laurent America Inc., 11-2381, U.S. District Court, S.D.N.Y.)

Saint Laurent has been selling red-sole shoes under brand names such as Tribute, Palais and Woodstock at high-end fashion stores that also sell Louboutin footwear, including Saks Fifth Avenue, Barneys New York and Bergdorf Goodman, according to the complaint.  Bloomberg Newsweek.

“Defendants’ use of a red sole on their infringing footwear threatens to mislead the public, and has impaired plaintiffs’ ability to control their reputation,” stated in the Louboutin complaint.   Louboutin concern could rest in the idea that the public will see a YSL shoe with the red sole and be mislead into thinking it is a Louboutin, therefore causing confusion over the source of the shoe.

Louboutin got the idea for the red-sole shoes when he painted red nail polish on the black soles of a pair of women’s shoes. He introduced the red soles in 1992, and have been adorned on every Louboutin sole ever since, according to the lawsuit.The U.S. Patent and Trademark Office awarded Louboutin a federal trademark for the red sole in 2008.  Yves Saint Laurent is a unit of Paris-based PPR, which owns Gucci and other luxury brands.

Interesting enough, the YSL Tribute, Palais, and Woodstock on saksfifthavenue.com do not appear to have the notorious red sole. But apparently they do exist because according to the complaint, Louboutin was informed by Yves Saint Laurent executives by letter in January that they planned to “continue to sell the infringing footwear”.  Sounds a bit risky, I guess we will have to wait and see how the court feels about the matter…

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What’s in a Name?

By Danielle Turturo [February 15th, 2011] 


With all the snow we have been having I have seen a lot of Hunter boots around. I have a pair myself that I love deeply. However it got me thinking about my Professor and fellow blogger, Dan Hunter. What if he wanted to use his surname as a trademark? Is all hope lost now?

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Don’t Have the Time to Create a Trademark and Build Up Good Will? Buy Some at Auction Prices!

By gakselband [December 10th, 2010] 



Have you ever dreamed of becoming the next big thing since Wonder Bread Sliced Bread but just can’t come up with the right mark to represent your vision? Well then make it down to the Waldorf-Astoria in New York City on December 8th and it just might be your lucky day. For the first time ever, Racebrook Marketing is holding a “brand name auction” in which practically anyone can buy a trademark, its domain name, and the good will that has been pumped into it over time. The website for the auction makes a tempting offer by stating, ““Buy a priceless Trademark, including its Domain Name, and reinvent its commercial success. Never in the history of marketing and advertising has there been this unique investment opportunity.” Unique investment opportunity? Let me get my grain of salt.

The website goes on to say: “The initial purchase is a royalty free, fully paid, exclusive license, including the right to sub license, that you can turn into full ownership when you file the Statement of Use and it is accepted by the Patent and Trademark Office.” This is where things get a bit tricky for those that are not fully versed in trademark law. The fact that a statement of use is required means that there are at least some marks that are registered on an intent-to-use basis and that any winning bidder must be able to start working on this new investment right away in order to actually get a vested right in the investment.

But the concerns do not stop there. A potential issue might exist for those desiring global expansion in the future. Since the trademarks are only registered in the United States, any international expansion will have to be done by the winning bidder and will come at a cost completely unrelated to what has already been spent on the auction.

However, with some proper research and guidance, one can actually come away with a great investment. World Trademark Review noted that at least 20,000 parties have shown interest and around 45% of the inquiries are from private-label manufacturers, and another 45% are from entities that represent other brand manufacturers. Furthermore, the Chief Executive of Racebrook, John Cuticelli stated, “Most of the people in this category are interested in the MEISTER BRAU mark…which used to be used on a fairly well-known Chicago beer. A brewery could start a new brand but may be better off buying a trademark that people remember.” In other words, as long as you have the financial backing, good will is just a bid away.

With the auction only a few days away, I can’t wait to see how it unfolds. A list of the brands, including many fashion marks, up for grabs can be found here.

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Finally! Forget the IDPPPA – Clothing that won’t have a problem with IP Protection!

By Ashly Sands [September 24th, 2010] 



I spy a high-level loophole for the architects of luxury clothing lines. Check out this MSNBC video depicting the newest way designers can deck out their customers.

Who needs the proposed Innovative Design Protection and Piracy Prevention Act when you can avail yourself of U.S. patent protection? <Read more>

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Li LASH Not Licensed

By Maggie Sicklinger [September 22nd, 2010] 


Cosmetic Alchemy manufactures and sells Li Lash, an eyelash growth stimulator, and Li Brow, an eyebrow growth stimulator.  The LI LASH mark is registered with the USPTO and has been used in commerce since 2008.  Cosmetic Alchemy claims its LI LASH mark is not only suggestive, but has acquired secondary meaning in the marketplace.

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OVERLOAD of “Inspiration”

By Ashly Sands [April 10th, 2010] 


Inspiration? Trademark Infringement? The terms may just be interchangeable…

Check out this March 31, 2010 New York Times article about Franklin & Marshall. I bet you thought I was talking about the small liberal arts college in Lancaster, Pennsylvania. Well, sort of, but I am ALSO talking about the Italian clothing line with the same name launched in 1999 by Italian entrepreneurs, Giuseppe Albarelli and Andrea Pensiero. According to the article they found a worn out Franklin & Marshall sweatshirt in a secondhand shop in London and created an entire line around it, allegedly BEFORE they discovered it was an actual college in the United States.

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