High end luxury brands routinely push the envelope on what can be considered a trademark for their brand. For example, Tiffany & Co. own several trademarks on the particular blue color, termed robin’s egg blue, associated with its packaging materials for its goods. Christian Louboutin gained recognition for his shoes having a distinctive red sole and obtained a trademark registration on those red soles. Now, Valentino is fighting for trademark registration of its ROCKSTUD® shoe design by relying on the success of these other brands to get their ROCKSTUD® shoe design registered.
ROCKSTUD® Shoe Design
Valentino filed three trademark applications (88/672,186; 88/672,019; and 88/672,225) in October of 2019 for different shoes having their ROCKSTUD® shoe design. The ROCKSTUD® shoe design consists of an arrangement of pyramid-shaped studs on shoes for women. The designs are shown below:
Trademark Office Action Rejection
In February of 2020, the Trademark Office issued rejections for each of the applications. The Trademark Office asserted the design is non-distinctive and merely ornamental. Valentino alleged acquired distinctiveness in the design based on their use of the design for over five years. Unfortunately, the Trademark Office found the features claimed highly ornamental and in common use by numerous others. The Trademark Office will consider any additional evidence submitted showing acquired distinctiveness.
Valentino responded to the rejection in the 88/672,019 application. In the response, Valentino asserts the uniqueness of the metallic, three-dimensional, pyramid-shaped studs to Valentino. They also assert the ROCKSTUD® shoe design is well known and instantly recognized by consumers as a symbol of the brand’s high-quality products. Valentino further provided abundant evidence showing over $41 million in revenue generated from sales of the ROCKSTUD® shoes. Valentino also presented evidence of the millions of dollars spent in advertisement and promotion of the sales. Further, they submitted evidence of extensive third-party press and unsolicited media coverage in various media outlets.
Comparison to Bottega Veneta Weave Pattern
Valentino also relied on the Trademark Trial and Appeal Board reversing the Examining Attorney’s rejection of Bottega Veneta’s weave design. Bottega Veneta obtained a trademark registration in 2014 for a particular basket weave pattern associated with its leather goods after the Examining Attorney rejected the mark for mere ornamentality and failure to show acquired distinctiveness. Bottega Veneta submitted evidence of $275 million in sales over a 6 year period. They also submitted evidence of publicity in several editorials and presence in numerous high end boutiques. This evidence supported the acquired distinctiveness of the mark. Valentino also argues that the ROCKSTUD® shoe design is even more distinctive than the weave design of Bottega Veneta.
Comparison to Christian Louboutin Red Soles
Valentino compared their ROCKSTUD® shoe design to the red soles registered by Christian Louboutin. The Second Circuit found the red sole trademark by Louboutin valid since Louboutin demonstrated evidence that the public associated the lacquered red sole with Louboutin. Such evidence included advertising expenditures, media coverage, and sales success. This evidence demonstrated the red sole was a symbol that gained secondary meaning, closely associated with Louboutin. Valentino argues that their ROCKSTUD® shoe design gained secondary meaning similar to that of the red soles of Louboutin in view of their sales, advertising expenditures, prominence in high-end retail stores, third-party press, and unsolicited media coverage which entitles them to trademark registration.
When claiming acquired distinctiveness in a mark, it is important to submit any and all evidence that the public associates your mark with your company. The Trademark Office considers five years use of the mark as a factor for acquired distinctiveness, however submitting additional evidence increases the chances of registration. Keep all your advertising expenditures as well as sales figures to submit as evidence that the mark functions as a source-indicator. Also, submit any third-party press or unsolicited media coverage as this evidence further bolsters use of the mark as a source-indicator for your brand.