UPDATE in red-sole case: Louboutin cries foul to Second Circuit, which "is likely to set a schedule" on PTO registration dispute

Posted by Charles Colman

Recall LAW OF FASHION's 1/17/13 post, "Reports of Louboutin-YSL red-sole dispute's resolution somewhat exaggerated, USPTO correspondence reveals," which presented and summarized letters to and from the parties in the fashion-law-case-of-the-decade, culminating in a USPTO decision that Louboutin found unpalatable.

That Jan. 16, 2013 letter from the USPTO's Office of the Solicitor to counsel for the parties stated that "Louboutin's preferred wording [for the revised trademark registration for its red sole] deviate[d] substantially from the [Second Circuit's] mandate." The USPTO nevertheless postponed entry of the amendment to the registration until Feb. 4, 2013, giving the parties time to, inter alia, seek clarification from the Second Circuit on its intentions about the appropriate modification to Louboutin's registration.

On Jan. 25th, Louboutin's counsel sought such clarification, in a letter to the Second Circuit (at page 3 in the composite document embedded below and also available at Scribd) containing exhibits of the USPTO correspondence -- and, just for good measure, photos of the same rather hideous multi-layered shoes that Louboutin argued would pose a problem, if the Trademark Office were to move forward with its preferred revision of the language in Louboutin's trademark registration:


Louboutin's letter more or less reiterates the arguments advanced unsuccessfully before the USPTO, in augmented and appellate-brief-lite form.  The bottom line: Louboutin's counsel wants the Second Circuit to revise its "Mandate" in the case (which I've appended at the end of the embedded composite document, for your convenience.)


Today (does that mean LOF is finally "breaking news"?!?), YSL's counsel sent its own letter to the Second Circuit, indicating that a telephone conference among Court personnel and the parties' counsel took place yesterday, Jan. 29th.   During that call, the parties "were advised by Court personnel . . . that the Court is likely to set a schedule for YSL to submit a substantive response to the arguments raised in [Louboutin]'s January 25 letter."  This guidance, however, proved inadequate, as YSL's Jan. 30th letter explains (full letter at page 1 of the composite document below; emphasis added in quoted portion):

"It was not clear to us or the clerk with whom we spoke . . . whether our submission [in response to Louboutin's Jan. 25th quasi-brief] should be in the form of a responsive letter at this time, whether the Court instead plans to order briefing on this issue, and whether the Court intends thereafter to rule on the submissions or to entertain oral argument. Whatever form the Court prefers for our submission, we do want to alert the Court that YSL intends to oppose the relief sought by Louboutin because, if granted, it would have serious anti-competitive effects not only for YSL, but also for all other legitimate competitors who design and sell non-infringing women's footwear with red outsoles...."

Anti-competitive effects, indeed; this is a major concern addressed in my (admittedly inchoate) scholarship.  (And speaking of scholarship, this writer is delighted to report that as of June 1st, he will take on the full-time role of Acting Assistant Professor at NYU Law School.  Perhaps it's been obvious from my intellectual property musings, here and elsewhere, that my heart is in legal academia.)

But back to the present: YSL's latest letter provides still more evidence that the red-sole saga might be a ways from the finish line.  Journalists, please take note!  Readers: you can always rely on LAW OF FASHION rely on LAW OF FASHION, at least until my job at NYU Law starts in June, to bring you the latest on this fascinating (if by now somewhat exhausting) case.


[UPDATE (2/1/13): The Second Circuit has issued an Order stating: "On January 25, 2013, plaintiffs filed a letter with the Court 'requesting that the Court modify the September 27, 2013 mandate.'  Defendants shall file any response to that request by February 8, 2013."  LOF is betting YSL's forthcoming response will look a lot like its successful argument before the USPTO; we'll let you know if there are any surprises....]




[Like everything on LAW OF FASHION, this post is for entertainment and informational purposes only, and does not constitute legal advice or create an attorney-client relationship among any individuals or entities. Any views expressed in this post or at the linked web pages are those of the relevant writer(s) on a particular date, and should not necessarily be attributed to this writer, his law firm, its agents, or its clients. Neither LAW OF FASHION nor any person or entity associated with it can or will warrant the thoroughness or accuracy of the content here or at the cited sources.]