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Strange trademark things going on — or perhaps nothing going on at all — with Charriol

I don’t know much about fine jewelry.  But a person looking at retail jewelry online during this, the season of discounting, pointed out to me last night that there seemed to be something very strange going on concerning nomenclature for jewelry pieces being offered on various store websites.  It seemed to have to do with pieces made by Charriol. Or was it, rather, Alor?  Or, A’lor?

The Trademark Blog:  "Mandatory Zut Alors Pun Here"

The Trademark Blog: “Mandatory Zut Alors Pun Here”

Being the kind of people we were, we assumed it “must be some trademark thingy,” and I, for one called it a night.

The jewelry-window-shopping person, however, was intrigued, and journeyed to the Charriol website, and found a URL that went http://www.charriol.com/legal.  And this is what it said:

Dear Partners,

Many of our trusted CHARRIOL dealers have recently experienced a marketing campaign by CHARRIOL’s longtime licensee/distributor, A’lor International Ltd., aimed at persuading you that CHARRIOL’s internationally famous cable design and products were returning to their original ‘A’lor roots’ or that CHARRIOL was changing its name to ALOR.  Some of you have been informed that ALOR cable jewelry was replacing CHARRIOL cable jewelry, and that CHARRIOL was either exiting the market or being ‘rebranded’ as ALOR.  Others have been persuaded to abandon their CHARRIOL displays or to replace well-displayed CHARRIOL jewelry with ALOR collections.

CHARRIOL and A’lor have tested their recent disputes in court and CHARRIOL maintains that A’lor, as the licensee of CHARRIOL, has a contractual obligation not to distribute its current lines of identical jewelry to CHARRIOL jewelry under the ALOR name.  And a federal court has recently agreed, because on April 10, 2014, the United States District Court for the Southern District of California ruled that A’lor is barred from infringing CHARRIOL cable trademarks by selling ALOR jewelry that uses such cable.  A’lor is similarly barred from using CHARRIOL trademarks, including cable, distributing or selling products with the cable design, advertising that A’lor was or is being ‘rebranded’ or merged with CHARRIOL, and other similar commercial activities which have caused great confusion in the jewelry and luxury goods marketplace.

The federal court on April 10 issued an injunction against A’lor which provides specifically:

Read More…

To die for!

Originally posted 2010-03-15 23:59:25. Republished by Blog Post Promoter

Counterfeit Chic logo

My own moments of snark notwithstanding–no, you don’t even get a link; if you missed it, then good–I am pleased to announce that the very bestest blog on fashion IP is back on track after an utterly inexcusable fashionable hiatus from posting: Susan Scafidi’s Counterfit Chic!

Now I have to go back to checking, but it will be a pleasure as I:

Oh there’s more, more, more, which is how we like it.  Get Counterfeit Chic back on your short list!

Smocking it out

Originally posted 2007-05-21 18:21:57. Republished by Blog Post Promoter

Ben Manevitz updates us on the Diane van Furstenburg “you stole my smock” litigation.

Ben’s take: “As a litigator, I’m going to give everyone involved in any litigation the secret! the best piece of advice ever! Ready? Here: Shut Up!”

Easy advice to give, but darn it, I like to say “smock”!  Smock, smock, smock, smock, smock, smock.

An emphatic NO!

Originally posted 2009-10-05 14:36:53. Republished by Blog Post Promoter

JOOP!

Chatty Kathy:

German designer Wolfgang Joop’s bid to have a punctuation mark trademarked [sic] for his Joop! clothing and perfume company has been denied by European Union judges. Joop applied to register two versions of an exclamation point: the first is a simple exclamation and the other is inside a rectangular frame.

Can’t blame him for trying!

Say — maybe he can get a registration for WRITING IN ALL CAPS INSTEAD?!

But, of course

Originally posted 2007-09-10 15:09:53. Republished by Blog Post Promoter

Shoes are dropping all over Europe:

L’Oreal, the world’s largest cosmetics group, has launched legal action against eBay, alleging the online auctioneer does not do enough to combat the sale of counterfeits, the company said on Monday.

We’ve been genuinely interested in this issue for a long time — if you’re new, click here and here.

The sincerest form of flattery

Originally posted 2011-11-08 08:32:22. Republished by Blog Post Promoter

Susan Scafidi seems genuinely shocked — no, I mean, genuinely!  — over this comment by Ralph Lauren:

Nit fun unzer

When the New York Times‘ Eric Wilson listened to Oprah Winfrey and Ralph Lauren chat for charity, one exchange stood out:

“How do you keep reinventing?”

“You copy,” he said. “Forty-five years of copying, that’s why I’m here.”

Of course, everyone knows that the signature looks of the Ralph Lauren family of brands are inspired by classic Americana — with an occasional detour around the globe — but coming from the guy who was on the losing end of the best-known design piracy case of the late 20th century, the admission strikes a chord.

Honestly, honesty?  Now, when the U.S. may be on the brink of finally passing a law that, while it wouldn’t come anywhere near the level of the French protection that wrangled Ralph, would have a similar effect in some cases?

Oh, that law!

Well, a litigation dust-up here and there notwithstanding, Ralph can afford to be honest, honestly.  I think, indeed, Mr. Lifshitz is referring not to copying other proprietary designs, but to that talent that turned him into a gazillionaire:  Mastering the art of assimilating and replicating the look and feel not, with all due respect, of “classic Americana” but a very focused upper-crust Northeastern WASP sub culture and making it his own.

I when I was in college, I observed plenty of Jewish kids from backgrounds like mine, but a generation or two deeper entrenched in assimilation, do this on a personal level.  Some pulled the copying it off, some didn’t.  (I mainly went in the other direction.)  Ralph went beyond accessorizing social climbing mobility and ethnic metamorphosis to selling them.  And he did  it brilliantly, tastefully and very, very profitably.

He’s a real gem.  Why should he lie about “stealing”?

The better question is a question on the one Susan asks at the end of her article:  “Now, when the U.S. may be on the brink of finally passing a law that, while it wouldn’t come anywhere near the level of the French protection that wrangled Ralph, would have a similar effect in some cases?

Of course it would.  Absolutely.  But the real question is not what would effect would the substantive provisions of the IDPPPA have had, in the abstract.  It’s what effect would the cost of the IDPPPA have had on the young House of Lauren. Read More…

Side by side comparison doesn’t decide likelihood of confusion

Originally posted 2006-07-11 17:14:18. Republished by Blog Post Promoter

Dooney & Bourke's pattern

This is an important decision: The Second Circuit Court of Appeals has partially reversed the earlier ruling of the U.S. District Court for the Southern District of New York (full decision here) in Louis Vuitton Malletier v. Dooney & Bourke, Inc.

Here’s the “money quote” as a once-great blogger taught me to say (citations and internal quotes omitted; link added) :

We turn next to the question of likelihood of confusion. . . . The similarity of the marks is a key factor in determining likelihood of confusion. To apply this factor, courts must analyze the mark’s overall impression on a consumer, considering the context in which the marks are displayed and the totality of factors that could cause confusion among prospective purchasers.’ The district court here noted that there were “obvious similarities” between the Louis Vuitton and Dooney & Bourke handbags. However, it determined that despite the similarities, the two marks were not confusingly similar. It appears the trial court made the same mistake that we crioticized in [the] Burlington Coat Factory [decision]: inappropriately focusing on the similarity of the marks in a side-by-side comparison instead of when viewed sequentially in the context of the marketplace. The district court reasoned:

[I]t could not be more obvious that Louis Vuitton uses the initials “LV,” while Dooney & Bourke uses its trademarked “DB” logo. Thus, a consumer seeing these trademarks printed on these bags, either up close or at a distance, is not likely to be confused. . . . [T]he Dooney & Bourke bags only use their “DB” initials; there are no geometric shapes interspersed with the monogram. . . . [T]he colors used on the Dooney & Bourke bag are noticeably toned down, and consequently fail to evoke the characteristic “friction” sparked by Murakami’s bright, clashing colors, the Louis Vuitton marks create a very different overall impression (i.e., large interspersed shapes and initials in crisp, bold colors) than the Dooney & Bourke bags (i.e., tightly interlocked initials in dulled colors).

Vuitton's pattern


We disapproved almost identical language in Burlington Coat Factory. Utilizing a side-by-side comparison can be a useful heuristic means of investigating similarities and differences in respective designs, so long as a court maintains a focus on the ultimate issue of the likelihood of consumer confusion. Courts should keep in mind that in this context the law requires only confusing similarity, not identity. Further, where, as here, the plaintiff claims initial-interest and post-sale confusion, market conditions must be examined closely to see whether the differences between the marks are likely to be memorable enough to dispel confusion on serial viewing. The district court erred because it based its determination that confusion between the Vuitton and Dooney & Bourke marks was unlikely at least in part on an overemphasized side-by-side comparison. This is suggested by the district court’s comment that no amount of expert opinion, legal analysis, or demonstrative evidence can overcome the clarity that comes from direct observation.

Read that excerpt again, then re-read it; then email it to your favorite federal judge — and your favorite client or prospective client, or non-specialist lawyer dabbling in trademark, who can’t understand why the PTO doesn’t understand the difference between his spelling that uses a “z” and the other guy’s pre-existing registration that uses an “s”.  Again:

Courts should keep in mind that in this context the law requires only confusing similarity, not identity. Further, where, as here, the plaintiff claims initial-interest and post-sale confusion, market conditions must be examined closely to see whether the differences between the marks are likely to be memorable enough to dispel confusion on serial viewing.

Got it? Read More…

The DO’s & DON’Ts of Fashion Lawyers’ Advertising

Originally posted 2012-10-23 21:13:14. Republished by Blog Post Promoter

Tomorrow night TONIGHT (October 24th) at Fordham Law School I will be speaking on a panel with fashion lawyers Bernice K. Leber of Arent FoxTed Max of Sheppard Mullin and Jeff Trexler of Fordham about “Fashion Lawyers’ Advertising.”  It’s “a Fashion Law Ethics & Professionalism CLE program”!  The distinguished panel will discuss “strategies for maintaining professional standards while promoting a practice in this newly defined and growing field.”

DATE: Tuesday, October 24, 2012
TIME: 6:30-8:30 pm
PLACE: Fordham Law School, 140 W. 62nd Street, Room 430 B/C

Click here to register if you’re a lawyer.  Click here to register if you’re something else.  Don’t ask, just click.

I am going to really have to be a “fashion lawyer” for this, I think.  I presume that means I will have to wear something nice.  Or extra nice!

And, of course, this is the “advertising.”  Seems ethical and professional, no?

We can discuss it tomorrow night, uptown.  See you there!

Lady calls me up…

Did you ever wonder what happened in the Val Colbert declaratory judgment action against Chanel?  Yeah, I forgot about it too, and evidently I was not alone.  Because something did happen, and no one seemed to notice.

But more about that in a minute.  Here’s why I even thought of it.

Lady calls me up — can I do anything for her?  She sells, or some else sells but she sells them for her, or the other way around — anyway, they were these listings on eBay.  For buttons that were removed from authentic designer clothing.  In other words, authentic designer buttons, being sold detached from the clothing they came in with.

And eBay, it appears, removed these listings, and there ought to be a law!

There is a law, actually.  It’s the law of contracts, and, all things being equal (yes, they never are, but let us say it), it’s the law that governs almost everyone’s relationship with eBay, which is a private company.  Your contract with eBay, as a seller or a buyer, is of course subject to its rules and regulations.  And just like Mom’s and Dad’s rules and regulations, and those of almost any private party that are not restricted by the criminal law or civil rights concerns, those rules can be whatever the parties agree to.  Or, in the case of eBay, whatever anyone who wants to play has to agree to, because for most of us, eBay will not negotiate.

eBay will negotiate with others, however — others who are not like you and me because they are rich , if only (though seldom only) in brand equity.  These parties have, at least in theory, the ability to upset the nice way it’s going for eBay, litigation-wise, on IP issues such as secondary liability for trademark infringement.

And these parties, many of whom are designers, really really really hate it when people do anything — anything! — well, anything other than burn it up or shoot it into outer space — with the hardware, buttons or other stuff bearing their logos but not the stuff they were originally attached to.  I should not have to explain why they hate this.  And by all indications, they have made this fact clear to eBay, which, despite what you think, mostly wants to work with these outfits.  For the goose does continue to lay very nicely the golden eggs.

ebay-logoAnd eBay hears it.

So, we know, again, that eBay can remove your listing for any reason or for no reason, almost all the time.  Many of the reasons it does have for such removals do exist, however, and they have to do with intellectual property — and not always with infringement, much less counterfeiting.  No, your authentic stuff may be pulled from eBay even though it is authentic, as eBay explains:

If we removed your listing, it’s probably because it either violated the law or one of our policies. Or, it may have been removed because the item’s rights owner (for example, Coach or Louis Vuitton) asked us to remove it. This can happen even if your item is genuine.

So how about the buttons, the ribbons, the hardware?  For your non-listing pleasure,  here is the specific rule that you agreed to when you agreed to sell on eBay which addresses that question: Read More…

Fashionably great

Originally posted 2012-10-25 14:01:10. Republished by Blog Post Promoter

I had a fabulous time, if you will, as a panelist and participant in last night’s Fashion Lawyer Marketing CLE at Fordham Law School’s Fashion Law Institute.  I certainly learned far more than I taught, but of course, that makes sense, considering that I was only one-third of the panel.  Attendance was so good that people even sat in the front row!  I didn’t even see people looking at their smartphones.  (Someone said that’s because there’s no signal in the room, but that’s just crazy talk.)

Fashion Law Ethics Panel - Fordham FLISome highlights:

The fascinating and insightful Professor Jeff Trexler moderated, and first called on Bernice Leber, who besides having done everything a lawyer can do right in a career has also been the president of the New York State Bar Association.  She walked briefly through the history of lawyer advertising regulation and laid out the standards that apply today, mostly focusing on the attorney advertising rules in New York (many of which are her handiwork!) but without failing to address the complex nature of multi-jurisdictional and online practice in our era.  Bernice also discussed specific cases that have come before ethics panels and acknowledged that applying the standards in a social-networking, multimedia, branding-branding-branding world can be tricky.

I spoke next.  Obviously I spoke about myself.   In other words, I acknowledged the fact that I was invited to participate in the panel in part because I am considered a “success” a “branding” my practice among fashion lawyers — having come to terms with the fact that I probably really am a “fashion lawyer,” just kind of a lumpy one — and that it probably does “work” for me.  But I made a point of discussing how conflicted myself is about all this myself-talking-about.  Believe me, I am.  It’s almost embarrassing, really.  Indeed, I said, (a) I’m not sure what it really means to say that all this @roncoleman “branding” “works,” in terms of “fashion” clients; (b) what I do on this blog and in social networking is, to put it mildly, not for everyone; (c) what I do here is certainly not for everyone who wants to represent major fashion houses or the other big-money parts of the fashion “industry,” but that (d) people who represent smaller clients in design, retail and other parts of that business are also fashion lawyers, and … that’s okay; (e) unfortunately, while there are opportunities in marketing to and serving such clientele, the first part is easier than the second if you don’t have bona fide experience — ideally representing Big Fashion for a meaningful period of time, as I have been privileged to do — and that (f) yeah, I know, that experience is not so easy to get these days.  By the end of my presentation I managed to ensure that not one participant would get any ideas about sending me a resume.

Not so the next speaker, the highly tall and distinguished and stentorian and charming Ted Max, who did not hesitate to reinforce my point that we way we do things here at LIKELIHOOD OF CONFUSION® is not for everyone.  Ted recommended the approach of being really successful instead, and discussed fashion lawyer “branding” in the broader sense of career development — Read More…

Louis Louis

Originally posted 2012-03-13 10:54:05. Republished by Blog Post Promoter

Steve Baird makes some great points about the Louis Vuittion / student activities flier kerfuffle:

There has been quite a flap surrounding the poster and invitation used by the University of Pennsylvania Law School to promote Penn Intellectual Property Group’s Fashion Law Symposium, scheduled for a week from tomorrow. The symposium . . . boast[s] an all-star cast of general counsel from the fashion industry, including those from Ralph Lauren, Forever 21, and Coach – to discuss in the first panel: ”Trademark and the Fast Fashion Phenomenon.” The second panel is set to discuss “Copyright for Fashion Design: Evaluating the IDPPPA.” Last, copyright scholar David Nimmer is addressing “Copyright and the Fall Line” in his keynote address, and a number of big name law firms are symposium sponsors or donors . . .

Louis Vuitton – owner of the likely famous trade dress and individual marks depicted on the designer bag shown above – objected to the use of the poster shown below in this cease and desist letter, and LV now has been branded a serial “trademark bully” for it (and past objections against other alleged infringements). The Penn Law School Associate Dean for Communications apparently agreed to cease use, but then the accommodation was formally withdrawn by the University’s Associate General Counsel, in this response letter, defending the poster as a clever parody. As far as I can tell, the coverage of this flap is highly critical of Louis Vuitton for sending the demand letter in the first place, and entirely in favor of the University’s final decision to not cease use; for some examples of the coverage, see TechdirtAbove the LawLaw of FashionEric Goldman’s Technology & Marketing Law BlogThe Volokh Conspiracy,Johanna Blakely, and Alison Frankel’s ON THE CASE.

While I tend to agree the tone of the LV letter was excessive, and a few carefully-placed phone calls instead of a written demand, with greatly toned down the rhetoric, likely would have been more effective, what has left me a bit surprised by the coverage of this dispute is the absence of any scrutiny of the University’s response or position.

Now, I must say:  To me, the tone and the tack are the entire tale, and the level of coverage on that ground is appropriate.  But not the content; not all of it, because, as Steve explains quite aptly, a lot of of what everyone is saying is wrong:

[I]t seems no one is asking any questions probing the University’s claimed parody, and my concern about the popular ”trademark bully” label and a social media shame-wagon approach to this issue is it sends the wrong message in that it greatly oversimplifies a very complex body of trademark parody case law — decisions that most counsel as quite unpredictable if they ever go the distance.

Like it or not, unlike the defense of federal dilution claims where certain conduct is excepted from liability, neither noncommercial use nor parody is excepted from or an affirmative defense to trademark infringement. Parody is really just another way of saying, there is no likelihood of confusion, which no one will know for sure, without credible survey evidence of the relevant public. . . .

Is it not at least plausible that the modified LV artwork was designed to simply attract attention and fill seats in the auditorium, and not to make fun of LV, and that LV’s design was so meticulously reproduced that some who see it won’t even notice the subtle changes? After all, trademark parody case law certainly supports the proposition that the more outlandish, outrageous, shocking and/or offensive the parody, the less likely confusion will result. We’ll probably never know, but it wouldn’t surprise me at all – if survey evidence were pursued on these facts – to find support for an actionable level of likelihood of confusion as to LV’s sponsorship, affiliation, connection, or approval of the fashion law symposium, especially since LV noted it has sponsored such events by other schools (Fordham Law School’s Fashion Law Institute). This, it seems to me, is a key alleged fact overlooked in the Associate Dean’s response. Moreover, the focus on comparing luxury goods to educational seminars seems to miss the mark, as there appears to be a direct overlap in the sponsorship of fashion law seminars.

I think Steve is right on every point here.   Read More…

They’ll always have Paris: Vuitton sues eBay

Originally posted 2007-01-22 00:11:58. Republished by Blog Post Promoter

They did the deed, or filed le writ, in France, where their chances of success — based on the last few years of pro-mark-owner decisions, plus the creeping incoherence of U.S. jurisprudence on trademark use on the Internet — are far better. We’ve thought about this topic before (PDF), if I haven’t mentioned that lately, and as skeptical as I am of the use of trademark law as a way to control distribution channels, I believe this is a cause of action that can fly — mainly because the big stinker in online auctions of luxury goods is that most of them are counterfeits.

“Too big a market to police,” cries eBay — I’ve been in the room when they’ve said this. Ah, yes, perhaps — but not at those profit margins (link added January 23rd). He who creates the problem, and profits from the problem, and controls the technology that perpetuates the problem, is the one who should bear the cost of solving the problem.

UPDATE:  Vuitton wins, eBay not so much.