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Louis Vuitton Malletier v. Dooney & Bourke
454 F.3d 108 (2d. Cir. 2006)
Lex: 454 F.3d 108
Facts: Louis Vuitton (Vuitton) sues Dooney & Burke (D&B) for trademark infringement of its mutlicolore line. Vuitton has been on the market selling trunks and accessories in the US since 1893. In 1896 Vuitton began using the Toile Monogram featuring the entwined LV initials. Vuitton had registered this with the PTO and has exclusively and continuously used this mark. In Oct. 2002 Vuitton launched the muticolore mark which was a modified version of the Toile marks printed in 33 bright colors. Vuitton spent $4 million in advertising and promoting the multicolore mark in 2003-2004. D&B was created in 1975 and in 2001 the company created the signature and mini signature line that featured DB monogram interlocking initials, a registered trademark. In 2002 a group working for D&B was photographed looking at Vuitton’s muticolore marks on white and black backgrounds. In July 2003 D&B launched its bag with DB monograms in bright colors against a white background and a bag with the black background in October 2003. Vuitton sent D&B a cease and desist letter and filed an action for trademark infringement, unfair competition and false designation, and trademark dilution under federal and NY state law in 2004.
Procedure: In 2004 US district court for southern district of NY found that Vuitton’s multicolore mark was inherently distinctive and had acquired secondary meaning in the marketplace but there was no likelihood of confusion with the D&B bag. Thus, the district court denied Vuitton’s motion for a preliminary injunction for trademark infringement of D&B. Plaintiff appealed.
Issue: Whether D&B is liable under trademark infringement for the dilution of the Vuitton trademark by creating a line of multicolore handbags with the D&B initials.
Held: No. The court finds that mental association of the marks is insufficient to warrant an injunction due to dilution of the trademark. The Circuit court affirmed the denial of a preliminary injunction on the basis of an alleged dilution of Vuitton’s mark under federal law. The court further remands the questions of Vuitton’s Lanham Act and NY State trademark and unfair competition claims.
Dicta: Trademarks are defined under the Lanham act as “any word, name, symbol, or device, or any combination thereof” which is used or intended to be used by a person ‘in commerce… to indicate the source of the goods, even if the source is unknown.’” 15 U.S.C. §1127. For a mark to be protected the mark must be sufficiently distinctive: either inherently distinctive or by demonstrating secondary meaning. § 43a of the Lanham act prohibits a person from using “any word, term, name, symbol or devise or any combination thereof .. which… is likely to cause confusion… as to the origin, sponsorship, or approval of his or her goods…” which applies to unregistered trademarks as well as trade dress as product design. To determine likelihood of confusion the court applies the Polaroid factors; strength of the mark, the similarity of the two marks, the proximity of the products, actual confusion, the likelihood of plaintiff’s bridging the gap, defendant’s good faith in adopting its mark, the quality of defendant’s product and the sophistication of consumers.
Analysis: The court applies a two prong test from Gruener + Jahr USA Publ’g v. Meredith Corp. 991 F.2d 1072 (2d Cir. 1993) that looks first at “whether the plaintiff’s mark merits protection and second whether defendant use of a similar mark is likely to cause consumer confusion.” The multicolore design is inherently distinctive and has acquired secondary meaning. To determine likelihood of confusion the court applies the Polaroid factors (listed above). The court notes that it must use the context of the marketplace to evaluate the similarities of the marks and not a by a side by side comparison. The court states that no single factor of the Polaroid test is dispositive and these are not the only considerations. Accordingly, the court reasons that injunction may only be achieved when there is dilution to be found which is “the lessening of the capacity of a focus mark to identify and distinguish goods or services regardless of the presence or (1) competition between the owner of the famous mark and other parties, or (2) likelihood of confusion, mistake or deception.” Because mental association of the marks is not sufficient and because Vuitton has not showed actual evidence of dilution the preliminary injunction was rightly denied.
Future importance: This case suggests that designers are able to utilize the same idea and design of another designer without being liable for trademark infringement so long as the marks themselves are distinctive. Thus, the case suggests the designers do not warrant protection over a specific type of design, in this case the use of monogrammed initials on a white/black background and bright colors, because the distinctiveness of the mark suggest that consumers will not be confused and the mark will not be diluted.