30 Sep Striped Shoes Can’t Be Trademarked, Tommy Hilfiger Says
Law360
September 12, 2013
By Emily Atkin
Tommy Hilfiger USA Inc. asked a New York federal judge on Wednesday to declare that the company behind footwear brand Charles Philip cannot trademark patterned vertical stripes and must stop threatening to sue Hilfiger over the interior of its shoes.
In its suit against Jumbo Bright Trading Ltd., Hilfiger asked the court to bar the Hong Kong-based company from sending cease-and-desist letters claiming that Hilfiger’s “Ithaca stripe” violates two of its pending trademarks for vertical stripe patterns. Hilfiger claims the stripes — which have been used for “many years” on the inside of Hilfiger shoes — cannot be trademarked because they are too indistinct.
“A vertical stripe pattern … does not function as a trademark because it is merely ornamental and lacks secondary meaning,” the complaint, which also names Tommy Hilfiger Licensing LLC as a plaintiff, said. “Plaintiffs’ use of a vertical stripe pattern on the inside of Tommy Hilfiger footwear is not likely to cause confusion.”
The case is reminiscent of French footwear designer Christian Louboutin‘s longstanding fight to defend its trademark for red-soled women’s shoes. In a landmark 2012 decision, the 2nd Circuit ruled that a single color can be used as a trademark in the fashion industry, effectively preventing designer Yves Saint Laurent SAS from making red-soled shoes.
In that case, the appeals court reversed a lower court’s conclusion that when it came to clothing, color was functional and therefore off-limits for fashion industry trademarks.
According to the Tommy Hilfiger lawsuit, Jumbo Bright markets shoes under the brand-name Charles Philip, which sells footwear in U.S. stores like Bloomingdale’s and Saks Fifth Avenue. The company sells loafers with a striped insole, the suit said.
The suit said Jumbo Bright’s cease-and-desist letters claim Tommy Hilfer’s Ithaca stripe infringes two of its trademarks — “vertical stripe pattern on the inside lining of the shoe” and “a three-stripe vertical stripe design on the shoe rim near the heel area” — which are currently pending in the U.S. Patent and Trademark Office. The trademarks claim that Jumbo Bright first used the pattern in 2010, according to the suit.
Tommy Hilfiger said it has been using its Ithaca stripes — which are blue and white, just like Jumbo Bright’s — since “well before” 2010. The company cited its Spring 2007 collection, which features the striped-insole shoes, and said they were “entitled” to use the pattern.
The mere presence of a vertical stripe does not indicate to a customer that the product is from any specific source, the suit said. The pattern is also not “aesthetically functional,” the suit said, meaning it is not a creative or original design.
“The use of a striped pattern on the interior of a footwear product is not capable of being protected under trademark law,” the suit said, adding that trademark protection for the stripes would “significantly hinder the ability of other footwear competitors to fairly compete in the marketplace.”
The lawsuit seeks a declaration that Jumbo Bright is not entitled to damages or other relief under the Lanham Act or New York state law.
Counsel for Tommy Hilfiger was not available to respond to requests for comment Thursday.
Counsel information for Jumbo Bright was not immediately available.
Tommy Hilfiger is represented by Darren Wayne Saunders of Manatt Phelps & Phillips LLP.
The case is Tommy Hilfiger U.S.A. Inc. et al. v. Jumbo Bright Trading Limited, case number 1:13-cv-06386, in the United States District Court for the Southern District of New York.