Tag Archives: Lego

Lego my Trademark

Europe just keeps generating stories. Their IP system is different, you see, though the march toward harmonization in a global market continues apace. Evidently, Lego — that incredible, creativity-inducing toy that made us ’60’s kids (and makes our own kids) such geniuses — had a “trademark” in Germany for “a 2×4 stud block design.” Now, crows Lego’s chief competitor, Mega Bloks, it doesn’t.

Could it ever? Since the decision by the U.S. Supreme Court in Traffix Devices , it has been clear that a trade dress claim cannot be made for “product configurations,” such as “a Lego,” but only for packaging. (Not always an obvious distinction.) This issue has been on the minds of more than a few global practitioners.

Anyway, it appears that Lego had found some way to protect — monopolize — its European business using trademark (whereas the appropriate protection would have been — and, for a time, was — patent). If the Mega Blok people are right, that’s history — as it is in Canada, too, since 2003, though they seem to have made some progress in China, which, however, is quite a Pyrrhic victory.

The good news for Lego: Their blocks still work a heck of a lot better than Mega Blok’s blocks. (Believe me, I know — my basement floor is coated with Legos and Duplos.) Sometimes you just have to compete on quality and value, Lego. It’s not so terrible.

UPDATE: Lego loses.

How Tweet it is

How Sweet it Is

A little topical tweeting music from the last few weeks via @roncoleman:

You could do worse than to check these out.

And away we go!

Lego loses

We reported on Lego’s overreaching years ago here and here.  They tried to use trademark rights as a way to protect the design of their toy and avoid competition.  But that is not what trademarks are, much less what they are for.  And now, barring a successful appeal, a European court has ruled that the shape of a Lego brick is simply not a trademark:

Lego, the biggest toymaker in Europe, lost a European Union court decision Wednesday over trademark rights for the shape of its famous toy bricks.

The European Court of First Instance in Luxembourg rejected Lego’s challenge to a 2006 EU trademark agency decision.

Lego had argued that the knobs on top of its bricks made them “highly distinctive” and eligible for a trademark. The agency ruled the toys could not be protected because their shape served a technical (functional) purpose.

The two rows of studs on top of Lego’s toy bricks perform a “utilitarian function” and are not “for identification purposes in the trademark sense,” according to the trademark agency, which is based in Alicante, Spain. . . .

EU trademark law “precludes registration of any shape” that is “sufficient to obtain the intended technical result,” the court said. This is the law “even if that result can be achieved by other shapes.”


Topical tweets

Here are some topical tweets by others of likely interest to LIKELIHOOD OF CONFUSION® readers that I’ve passed along to members of my Twitter social network in the last couple of weeks:

There.  Now you’re all caught up!  Stay caught up by following me (Ron Coleman!) on Twitter @roncoleman.

So shoe me!

Staci Riordan reports on the big shoe-vs.-shoe design lawsuit everyone’s talking about — invoking copyright plus one Lanham Act and two New York law varieties of “unfair competition” that seems to fold in a trade dress claim (huh?) — between a couple of shoe designer guys, such as they are.

Regarding manly, Republican, footwear, I do know; but from ladies’ shoes I don’t.  I can’t even pronounce the name of the plaintiff.  So I leave the legal analysis to her and, with all due respect, the fashion analysis to … of course … The Manolo.

Beatles in Lego

Two shoes too many

What struck me, though, was that the fight is over what seem to be called “Lego shoes.”  I spent half an hour on the Internet trying to figure out if that name is “authorized” or just a nickname, based on the designer’s — oh, ok, Balenciaga‘s — homage to, uh, Lego.

Balenciaga’s unnavigable brochureware website is certainly not helpful.  Ultimately I came up empty, concluding that in fact Balenciaga is not a LEGO licensee and does not use the brand itself in connection with commerce in the shoes.

This seems to be confirmed, and yet treated in an odd way, by the complaint itself, in which Balenciaga (I think I got it down now) alleges as follows:

11. In February 2007 Plaintiff Balenciaga showcased its distinctive Closed FrontCage Sandals with Ankle Pads during its Fall 2007/Winter 2008 runway collection. These shoes are also known by their more fanciful names the “Sportiletto” and/or the “LEGO Shoes”. (Balenciaga’s LEGO shoes are depicted in Exhibit A).
12. Balenciaga’s LEGO Shoes exhibit unique aesthetic features. Balenciaga’s LEGO Shoes embody an original arrangement of elements.
13. The Balenciaga LEGO shoes were designed for Plaintiff Balenciaga by Nicolas Ghesquiere, a French citizen.
14. Balenciaga began selling its distinctive LEGO Shoes in the United States in the fall of 2007.
15. Balenciaga’s LEGO shoes garnered much press coverage in the United States, and were featured in various U.S. fashion magazines, including Vogue and ELLE.

Well, yeah.  But here’s the thing.  Right:  There is no claim in the complaint that Balenciaga is a licensee.  True, the word “LEGO” is in all caps per the style in trademark practice (hence the all-caps name of this blog) — a tacit acknowledgment that we’re talking about, well, someone’s trademark here.  But there’s no mention at all of whose trademark that just might be.

So I do think it’s a little strange, and a little discomfiting from an IP point of view, that Balenciaga’s papers adopt the popular, but evidently unauthorized, “LEGO shoes” name for their offering.  They define the subject of their lawsuit in the complaint as “Balenciaga’s LEGO shoes,” “distinctive LEGO shoes,” etc.  All this would certainly give anyone reading the papers, at least, the distinct impression that there’s a trademark in this case for “LEGO shoes.”   And they could be forgiven for thinking that the owner of that trademark is… Balenciaga!

All right, this is probably not a use in commerce under the Lanham Act.  I’m not saying Balenciaga is, exactly, infringing or even diluting the LEGO trademark, or that its lawyers are.   Besides, this use, in pleadings, is almost certainly privileged.

But guess what:  There are real authorized LEGO shoes.  Yet if you were litigating the issue and commissioned a consumer survey today for the term “LEGO shoes” — go ahead, run a search while you’re at it — what source of such a posited product would be the one with secondary meaning in the term?


So, forget which shoe looks like which!  Given Lego’s propensity for claiming rights in stuff, isn’t it surprising that those blockheads haven’t weighed in with their usual snappy routine?  Why isn’t Lego dropping the hammer on third parties that market the shoes using the LEGO trademark (or using just plain Legos!)?  How come Lego isn’t screaming about how this dilutive use is being reinforced by Balenciaga’s fast-and-loose “acquisition” of the LEGO mark in its papers, amplified by the widespread reporting of the lawsuit?

Shouldn’t LEGO, hardly ever shy about trademark rights both real and imagined, be claiming some kind of rights in, or about, the “LEGO shoes”?

Not once you see them. Sorry, Manolo.

UPDATE:  Settled, of course:

Apparently the designers at Steve Madden didn’t learn their lesson after the McQueen lawsuit because shortly thereafter, Balenciaga slapped Madden with a very similar lawsuit. The shoes in question: the Lego shoe from Balenciaga’s Fall 2007 collection, which rose to fame after Beyoncé wore them to the American Music Awards in 2007. Balenciaga’s lawyers claimed that Madden “intentionally copied” the $4,175 shoe and sold it for about $100. The parties settled almost two years later, with Madden paying Balenciaga an “undisclosed amount.” Madden’s thoughts on the lawsuit: “They did a multicolored shoe and we did it. It was stupid.

Well, what do I know about shmattes?

Lego-ing, going, gone….

The Globe and Mail reports:

Danish toy giant Lego System AS was given a sharp lesson in the workings of free-market “creative destruction” yesterday when the Supreme Court of Canada dismissed its case against upstart Mega Bloks Inc. over look-alike toy bricks.

Last March we blogged on Lego’s adventures at trying to avoid competition by enforcing its expired IP rights forever around the world. We knew Canada would come through … didn’t we?