Recently, the New Balance footwear company won a landmark $1.5 million trademark decision in the Suzhou Intermediate People’s Court, near Shanghai, China. Daniel McKinnon, the New Balance senior counsel for intellectual property, told the New York Times: “If the China marketplace can be thought of as a schoolyard, New Balance wants to make it abundantly clear we are the wrong kid to pick on.”
The schoolyard brawl all started when New Balance alleged that three Chinese brands infringed upon its well-known New Balance “N” trademark. The three Chinese shoemakers, New Boom, New Barlun, and New Bunren, saw fit not only to use similar brand names, but also to trade off of New Balance’s international acclaim by mimicking its slanted “N” design on their shoes. A Suzhou Court cited the defendants’ free-riding, consumer confusion, and market harm as the basis for its ruling in favor of New Balance.
What makes this case important is not only that New Balance was prepared to fight for its rights in China—often a challenging thing to do—but also that it was willing to do so over a single-letter trademark.
A trademark is a source indicator that can convey a range of messages about your brand such as quality, price, taste and reputation—the sometimes obvious and sometimes mysterious factors that, in total, are the goodwill of the brand.
Brand owners often reflect upon the value and protectability of words, names, logotypes, slogans and even colors as trademarks. The victory by New Balance in a famously tough territory tells us that a lot can ride on who is found to own and have the rights to exploit a single letter.
Minimalism is as much a factor in trademark recognition as anywhere else in the broad field of visual expression. Mercedes Benz has made a simple three-pointed star one of the most recognizable marks on earth. In the USA, Louboutin owns the color red for the soles of shoes, and Federal Express owns the truncated version of its mark popularized by the public: FedEx. Take it down even further, and you get marks with one or two letters: PayPal is recognized by two cerulean stylized “P’s” and Facebook by a solitary but consequential byzantine blue lower-case “f”. Uber upgraded its former “U” mark to a modernized “U” enclosed by emerald green.
In fashion, designers have been using single-letter marks for decades. Hermès uses its elegant “H”; and of course, New Balance is using its slanted “N”. A few logos have doubled letters: Gucci has made the twin “G” into a brand; as with the seemingly reflective Tory Burch “T”, the mirrored Fendi “F”, and the interlocking “Cs” of Chanel.
Single-letter marks can be significant in fashion because a single letter can serve not only as a logo, but also as a design that can be emblazoned on clothing, handbags, shoes, etc. Meanwhile, the boom in online retail—where a mark may be only barely visible—has been the basis for the further simplification of marks. The large British online retailer Asos recently abbreviated its trademark to the letter “a,” the better to identify the brand on its mobile app.
Credit: Candace R. Arrington
Candace Arrington provides research support as a law clerk to our corporate and business law, intellectual property law and entertainment law practices.
One of the ways to build brand identity in fashion is to create strong customer recognition of a particular color as a signature of the brand. That has value across all lines of commerce. We can be sure, for instance, that no one will consider starting a worldwide package delivery service that uses solid-brown trucks and driver uniforms. In fashion, there are many examples, from Tory Burch’s orange doors to the red outsoles of Christian Louboutin footwear—the latter of which became the subject of important litigation in the United States.
In the Louboutin case, Louboutin v. Yves Saint Laurent Am. Holding, 696 F.3d 206 (2d Cir. 2013), the Second Circuit Court of Appeals held that Louboutin could retain its trademark registration for red lacquered outsoles for “women’s high fashion designer footwear” in which the outsole and upper were of contrasting colors. What that means is that, if your competing shoes are monochrome, as was the YSL style (which had a red heel and insole as well), you can use red lacquered outsoles. But for all other such footwear, Louboutin owns the exclusive right in the United States to use lacquered red for outsoles. Both sides in the case were therefore able to claim victory: the particular Yves Saint Laurent style did not infringe the Louboutin trademark because it was indeed all red, but the Louboutin trademark was not stricken from the register, simply limited to what Louboutin has mostly been doing all long—which is to put lacquered red outsoles on women’s footwear with contrasting uppers.
It is not often that litigation ends in such a win-win scenario, but the message remains the same in any situation: If you have an important color that you believe is part of your brand’s “signature,” work with counsel to structure efforts to seek protection of that color as an element of both a trademark (a brand identifier in the form of words and logotypes) and trade dress (a brand identifier in the form of particular elements of product packaging and, with a bit more effort, the products themselves).
There are related issues. One is the color spectrum: if you are claiming the color blue, what range between blue-tinted white to midnight blue, on one hand, and green-blue to gray-blue, on the other, are you claiming as your true blue? Another issue is the business spectrum: what are the product categories and the markets (by type of customer, price point, etc.) for which you are claiming exclusivity for your color? And as the Louboutin case shows us, much may ride on the positioning of your “signature” color on products (and packaging) and your ability to prove that the marketplace understands that the signature is yours alone.
The takeaway from all this remains much the same as with other questions concerning branding in the fashion and accessories sectors: marketers should work closely with lawyers and get them involved as early as possible in the decisions that they make.
Credit: Alan Behr
As I was crossing Fifth Avenue the other day, I found myself behind a very tall and well-dressed woman who took her strides in chic stilettos. Each time a foot hit the pavement, the leg wobbled before gaining its firm grip; and so did she strut westward: heel to the pavement, wobble, steady; next heel down, wobble, steady, and so on. Fortunately, she was young and quite fit; indeed, her calf muscles looked like prize-winning eggplants. Enter the laws of physics: the heels and soles of those shoes were undoubtedly manufactured to uniform specifications for both short women and tall ones. Assuming you are (as this lady was) over six feet tall, even if you are thin (as she was), you are putting a lot more weight on those heels and offering them a much higher center of gravity on which to balance the whole of you than would a similarly proportioned woman one foot shorter than you. Although I had to admire the lady’s determination to wear what she liked, I had to wonder if there was perhaps a fashionable alternative—Salvatore Ferragamo pumps or Tory Burch ballet flats—that would prevent every stride from looking as if it were an invitation to a trip and fall scenario. Or is it that we men, bound as we are to heels that look like horses’ hooves, cannot fully appreciate what woman are prepared to go through with their shoes and why they choose to do it?
Credit: Alan Behr