1-30-13 ysl letter to second circuit regarding mandate and uspto registration, 1-25-13 louboutin...

7/29/2019 1-30-13 YSL letter to Second Circuit regarding Mandate and USPTO registration, 1-25-13 Louboutin letter re: same

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Case: 11-3303 Document: 138 Page: 1 01/30/2013 831478 2


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ME1 14853319v.1

Harley I. LewinPartner

T. 212.609.6818F. [email protected]

McCarter & English, LLP

245 Park Avenue27th FloorNew York, NY 10167-0001T. 212.609.6800F. 212.609.6921www.mccarter.com

BOSTON

HARTFORD

NEW YORK

NEWARK

PHILADELPHIA

STAMFORD

WILMINGTON

By Electronic and Hand Delivery

January 25, 2013

Catherine OHagan WolfeClerk of CourtU.S. Court of Appeals for the Second CircuitThurgood Marshall U.S. Courthouse40 Foley SquareNew York, NY 10007

Re: Christian Louboutin S.A. v. Yves Saint Laurent America, Inc.No. 11-3303

Dear Ms. Wolfe:

On behalf of appellants Christian Louboutin S.A. and Christian Louboutin(collectively, Louboutin), we write to request that the Court modify the September27, 2012 mandate issued to the U.S. Patent and Trademark Office (USPTO) [D.I.132] (Mandate).

As presently written, the Mandate instructs the Director of the USPTO to makeappropriate entry upon the Offices records to reflect that U.S. TrademarkRegistration No. 3,361,597 . . . is limited to a red lacquered outsole on footwear thatcontrasts with the color of the adjoining (upper) portion of the shoe. Mandate at 2(emphasis added). While the language of the Courts September 5, 2012 Opinionand Order [D.I. 121] (Opinion) makes clear on page 28 (in footnote 25), that theCourt has defined an upper as the visible portions of the shoe other than theoutsole, the Mandate itself uses only the defined term upper and adds the wordadjoining. The USPTO believes it is compelled to adopt the language of theMandate verbatim, without the definitions set forth earlier in the Opinion. However,this language creates greater ambiguity rather than clarity and is directly contrary tothe practice of the USPTO, which is to reject descriptions that do not clearly andaccurately state what the mark comprises and/or create misleading impressions.SeeTrademark Manual of Examining Procedure (TMEP) 802.02.1

1The USPTOs call for clarity is found throughout the TMEP. For example, [t]echnical or

esoteric language and lengthy descriptions of characteristics or uses are not appropriate.TMEP 1402.01. The language used to describe goods and/or services [in a trademarkapplication] should be understandable to the average person and should not require an in-depth knowledge of the relevant field. Id. Moreover,the USPTO regularly rejects the use ofdevices such as parentheses and quotations in trademark applications because the use ofsuch devices can lead to confusion. SeeTMEP 1402.02. Although section 1402discusses the use of parentheses and quotations, the discussion is apposite here because



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Catherine OHagan WolfeJanuary 25, 2013Page 2

ME1 14853319v.1

The disagreement between counsel and the USPTO turns on the adoption by theUSPTO (and seconded of course by YSL) of the words adjoining upper which isused by the Court in its mandate and which the Court earlier defines as the visibleportions of the shoe other than the outsole. Opinion at 28 n. 25. The Courtsmandate however does not indicate that the words adjoining upper are a definedterm. As such, adoption by the USPTO of the language in the Courts mandate,without more, leads a reader left adrift as to what is meant by upper or adjoiningupper leading to a higher level of confusion and increased likelihood of litigation inthe future.

In an effort to more accurately reflect the Opinion of the Court, Louboutin has urgedthe USPTO adopt the clear language of this Court on page 28 of the Opinion where

it specifically defines the upper as the visible portions of the shoe other than theoutsole. Opinion at 28 n.25. As noted the USPTO feels compelled without morefrom this Court, to adopt the language contained only in the Mandate per se. YSLhas urged such adoption, while Louboutin has urged the clearer language noted.Because the parties and USPTO are unable to agree, we are requesting this Courtclarify the Mandate contained in the Opinion. Louboutins request is timely pursuantto the Courts Order dated January 10, 2013 [D.I. 132].

In the Opinion, the Court determined that Louboutins trademark, consisting of ared, lacquered outsole on a high fashion womans shoe has acquired limitedsecondary meaning as a distinctive symbol that identifies the Louboutin brand, butthat the evidence before the Court did not support extending the protection of the

trademark to instances where a red outsole was used in connection with an all redmonochrome shoe, finding under those circumstances , the red outsole did notserve a trademark function. Opinion at 2. On September 27, 2012, the Courtissued the Mandate to the USPTO to make appropriate entry upon the USPTOsrecords to modify the Louboutin Registration in accordance with the Opinion.

Noting that it is constrained by the Courts Mandate, the USPTO has proposed toamend the Louboutin Registration as follows (emphasis added to show the changesproposed):

The color(s) red is/are claimed as a feature of the mark. The markconsists of a lacquered red outsole on footwear that contrasts with the

color of the adjoining remaining portion of the shoe (known as theupper). The dotted lines are not part of the mark but are intendedonly to show placement of the mark.

SeeDecember 20, 2012 Letter from Thomas L. Casagrande to counsel of record, ,attached hereto as Exhibit 1.

the description of the mark in effect works as a limitation of the description of the goods andservices.



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Both Louboutin and Yves Saint Laurent (YSL) submitted comments in response tothe USPTOs proposal. YSL agrees with the language suggested by the USPTO.SeeJanuary 8, 2013 Letter from David Bernstein to Thomas L. Casagrande,attached hereto as Exhibit 2. Louboutin, on the other hand, is concerned that theUSPTOs proposal will lead to uncertainty because it adopts language that isshorthand for other, more precise, language in the Courts Opinion, namely, that anupper is the visible portions of the shoe other than the outsole. See January 4,2013 Letter from Susan Upton Douglass to Thomas L. Casagrande and January 14,2013 Letter from Susan Upton Douglass to Thomas L. Casagrande, attached heretoas Exhibits 3 and 4, respectively.

The ambiguity of the proposed language from the USPTO is amply shown by thevery inability of Louboutin and YSL to agree as to the meaning to be ascribed to thewords adjoining and upper in the modified mark definition. As Louboutin hasdiscussed extensively in its submissions to the USPTO, the only shoes at issue inthe proceedings were all red monochrome shoes of YSL. This Court entered itsOpinion and Order on such evidence yet the adoption of the proposed language bythe USPTO would grant YSL and third parties rights never adjudicated, that is, thepossible right to limit the color matching to only parts of a shoe, rather than theentire remaining portion of a shoe that is visible, i.e., the very essence of what is infact a monochrome treatment.

For example, adopting the Courts shorthand definition of upper in the description

will create a misleading impression among those who are not familiar with theCourts Decision and Order, requiring such parties to go back and read (or re-read)the Courts decision (assuming those parties are even aware at the time that theterm derives from the Opinion). Without clarification from this Court, one can easilyforesee other courts being asked to interpret what this Court meant by adjoiningand upper, particularly since those terms are not within the general lexicon usedby the USPTO.2 See, e.g., Ex. 4 at 3-4. The following three examples assumingthat rather than as pictured, each has a red outsole (discussed in greater detail inExhibit 4), elucidate the crux of the issue.

2For example, as demonstrated in Louboutins January 16, 2013 submission to the USPTO,

Louboutin, other courts and third parties, including the U.S. Customs and Border Patrol, mayhave to wrestle with such issues as whether a heel, toe or embellishment of a different coloradjoins or is part of an upper, or a toe. SeeEx. 4 at 3-4.



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Although these shoes are outside of the Courts decision because they are not

monochromatic, the adoption by the USPTO of the language of the Mandate, wherethe term adjoining and/or upper is absent the definition given either by this Court,increases the likelihood of further, costly confusing litigation because clearlyinfringing shoes would be taken into the realm of questionable. For example, in theshoe on the left, is the heel part of the upper? Is the upper adjoining? Should theUSPTOs proposed language be adopted, whether these shoes are excludedbecomes at least arguable. Ex. 4.

Louboutin believes that all the uncertainty and ambiguity created by the USPTOsproposed language, adjoining remaining portion of the shoe (known as theupper), can be avoided by using the language the Court itself used in defining amonochrome shoe and thus proposed that the USPTO adopt the following

description (emphasis added):

The color(s) red is/are claimed as a feature of the mark. The markconsists of a lacquered red outsole on footwear that contrasts with thecolor of any visible portions of the shoe. The dotted lines are not partof the mark but are intended only to show placement of the mark.

SeeExs. 3, 4.

Louboutins proposal is also consistent with the USPTOs requirement that a marksdescription be precise and unambiguous. Trademark Manual of ExaminingProcedure (TMEP) at 808.02. (A description should state clearly and accurately

what the mark comprises, and should not create a misleading impression by eitherpositive statement or omission.). By including the language used directly by theCourt to define upper, namely, the visible portions of the shoe other than theoutsole, Opinion at 28 n.25, the description informs the public that any visibleportion of the shoe, other than the outsole, comprises the upper and eliminateswords in quotations, parentheses or which might be otherwise open to latermisinterpretation.



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EXHIBIT 1



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OFFICE OF THE GENERAL COUNSEL

OFFICE OF THE SOLICITOR

OFFICE OF THE SOLICITOR, MAIL STOP 8, P.O. BOX 1450, ALEXANDRIA, VA 22313-1450 WWW.USPTO.GOV

Phone: 571.272.9035 Fax: 571.273-0373

December 20, 2012

VIA UPS & EMAIL

Susan Upton DouglassFross Zelnick Lehrman & Zissu

866 United Nations Plaza

New York, NY 10017

[email protected]

Harley I. LewinMcCarter & English

245 Park Avenue

27th Floor

New York, NY [email protected]

David H. BernsteinDebevoise & Plimpton LLP

919 Third Avenue

New York, NY 10022

[email protected]

Re: Christian Louboutin S.A. v. Yves Saint Laurent Am. Inc. , No. 113303cv (2d Cir.),

No. 11-cv-2381 (VM) (S.D.N.Y.);

U.S. Trademark Reg. No. 3,361,597

Dear Counsel,

On September 27, 2012, the U.S. Court of Appeals for the Second Circuit issued its Mandate in

the above-referenced appeal and provided a certified copy to the United States Patent and

Trademark Office (USPTO). The Mandate provides:

Pursuant to 15 U.S.C. 1119 the Director of the United States Patent and

Trade [sic] Office shall make appropriate entry upon that Offices records

to reflect that U.S. Trademark Registration No. 3,361,597, held by

Christian Louboutin and dated January 1, 2008, is limited to a red

lacquered outsole on footwear that contrasts with the color of the

adjoining (upper) portion of the shoe.

In the Second Circuits opinion, the Court defined upper, explaining that it was limiting the

trademark to uses in which the red outsole contrasts with the remainder of the shoe (known as

the upper). Christian Louboutin S.A. v. Yves Saint Laurent Am. Holdings, Inc., 696 F.3d 206,212 (2d Cir. 2012).

The USPTO intends to give effect to the Courts order by amending the description of the mark

in Registration No. 3,361,597 as follows (changes are to the current mark description and are

underscored):



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Susan Upton Douglass

Harley LewinDavid H. Bernstein

Page 2

The color(s) red is/are claimed as a feature of the mark. The markconsists of a lacquered red outsole on footwear that contrasts with the

color of the adjoining remaining portion of the shoe (known as the

upper). The dotted lines are not part of the mark but are intended only

to show placement of the mark.

The USPTO is obligated to implement the mandate using the terms provided by the Second

Circuit. The USPTO believes the proposed amendment best complies with the Courts mandate

and removes any potential ambiguity regarding the meaning of the term upper, as that term

was defined by the Court.

Based on our review of the docket sheets on PACER, we understand that the parties have not

requested any clarification or stay of the Second Circuits mandate, such that the USPTO will

proceed to implement it as described above. In the event the USPTOs understanding is

incorrect, however, and pursuant to Trademark Manual of Examining Procedure (TMEP) 1610,

the USPTO is providing the parties until January 12, 2013, the opportunity to inform the USPTO

if a request for clarification of the Second Circuits mandate has been filed by any party.

Any party submitting a response to this letter must do so in writing on or before January 12,

2013, directed to the undersigned. The submission must include a copy of the partys Court

filing(s) and a request that the USPTO delay amending the registration until the Court rules on

such filing(s). Counsel is reminded to serve copies of any such submission to the other

recipients of this letter.

Very truly yours,

Thomas L. Casagrande

Associate Solicitor

(571) [email protected]

Thomas L.

Casagrande

Digitally signed by Thomas L.

Casagrande

DN: cn=Thomas L. Casagrande,

o=U.S. Patent and Trademark

Office, ou=Office of the Solicitor,

email=thomas.casagrande@uspto.

gov, c=US

Date: 2012.12.20 16:26:34 -05'00'



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EXHIBIT 2



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EXHIBIT 3



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EXHIBIT 4



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{F1152551.2} ME114658377v.1


212.813.5995

[email protected]

VIA E-MAIL: [email protected]

VIA Express Mail

January 14, 2013

Thomas L. Casagrande, Esq.Associate SolicitorU.S. Patent and Trademark OfficeOffice of the SolicitorMail Stop 8P.O. Box 1450Alexandria, VA 22313-1450

Re: Christian Louboutin S.A. v. Yves Saint Laurent Am. Inc., No. 11-33-3-cv (2d Cir.),No. 11-cv-2381 (VM)(SDNY)

U.S. Trademark Registration No. 3,361,597

Dear Mr. Casagrande:

This letter is submitted by Susan Upton Douglass, prosecution counsel, and Harley ILewin, litigation counsel from McCarter & English, on behalf of Christian Louboutin

(Louboutin).We are in receipt of the letter from counsel for Yves Saint Laurent America, Inc., YvesSaint Laurent America Holding, Inc., and Yves Saint Laurent America S.A.S.(collectively, YSL ) to you dated January 8, 2013 For the reasons set forth in our letterdated January 4, 2013, and as explained in further detail below, Louboutin respectfullydisagrees that the USPTOs proposed modification to the description of the Louboutintrademark should be adopted in its entirety, as urged by YSL. It remains Louboutinsposition that the alternative language it has suggested most accurately reflects the Courtof Appeals true intent. For ease of reference, Louboutins proposed language is:

The color(s) red is/are claimed as a feature of the mark. The mark consists

of a lacquered red outsole on footwear that contrasts with the color of anyvisible portions of the shoe. The dotted lines are not part of the mark butare intended only to show placement of the mark.

Contrary to YSLs claim, the Court of Appeals did not outright limit Louboutins RedSole trademark (Registration No. 3,361,597). Rather, the mark stands but with onelimited exception. The Court of Appeals modified the Red Sole trademarkonly toexclude red monochrome shoes. Any further limitation of the mark would have been



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outside of the Courts authority. Indeed, based on well-settled principles of appellatejurisprudence, the Courts ruling was necessarily constrained by the evidentiary recordbefore it, in this case, monochrome red shoes by YSL. On the basis of that evidence, andthat evidence alone, the Court determined that the red outsole could not serve as a

trademark because there was no contrast that caused the outsole to pop.

YSL does, however, acknowledge that the USPTO is obligatedto implement theMandate using the terms provided by the Second Circuit. (Letter at 2, emphasis added).Despite this express admission, YSL urges the USPTO to ignore the Courts explicitdefinition of the term upper by insisting that the parties understood the term to referto a portion of the shoe distinct from the heel, the outsole, and the insole. (Letter at 2).YSLs position ignores the fact that the Court defined the term upper in a very specificmanner, to wit, we use the word upper to refer to the visible portions of the shoeother than the outsole. (Op. at 28, n. 25, emphasis added). This distinction is the veryreason that the Courts short-hand form of adjoining upper should not be used in

redefining the mark. The Courts definition differs from that of the industry and wouldrequire third parties to continually have to go back and read a 31-page decision to divinethe Courts intent if indeed they are aware of the decision.

As noted in our January 4 letter, the USPTO/YSLs proposed language would likely leadto litigation over what constitutes an upper that adjoins the outsole. By way ofillustration, and to better frame Louboutins concerns, we offer the following:

This photograph depicts the red monochrome YSL shoe at issue in the litigation (left) ascompared with a contrasting one by Louboutin (right). The YSL shoe is completely redin all aspects and corresponds exactly to the definition given by the Court of Appeals fora monochrome shoe: the top, bottom, and heel are a uniform red color. It is thesingle

exception to the Red Sole trademark as found by the Court of Appeals.



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The shoe immediately above, the photo of which is from the Louboutin web site, perhapsbest illustrates the crux of Louboutins position. Such style of shoe was notbefore theCourt of Appeals when it rendered its decision. Moreover, it is most clearly nota

monochromatic red shoe, which was the basis for the Courts finding (We further holdthat the record fails to demonstrate that the secondary meaning of the Red Sole Markextends to uses in which the sole does not contrast with the upper in other words whena red sole is used on a monochromatic red shoe .) (Op. at 29, emphasis added). If fakesof this shoe were imported without the Louboutin name, protection against a shoe ofthis kind would become problematical under the proposed USPTO language as urged byYSL as neither the black portion nor the white heel might be considered adjoining, andthe heel, which is below the top part of the shoe, might not be considered part of theupper. However, this shoe is clearly not monochromatic and has no resemblance to theYSL shoe considered by the Court of Appeals.

Whenever fake shoes of this nature come to the attention of the U.S. Customs and BorderProtection, they are routinely stopped and seized by Customs even if the name is differentor there is no name at all1. The seizures are based on the Red Sole trademark asregistered. However, if the language proposed by the USPTO and urged by YSL isadopted, it would give counterfeiters room to argue that these blatant infringements arenow permissible. This could have a devastating financial impact on Louboutin and alsodeceive consumers, acting to effectively cause Louboutin to lose the appeal of its uniqueRed Sole mark. We are absolutely certain this was not the intention of the Court ofAppeals since, as noted above, the Court of Appeals had as a matter of the record beforethem only red monochrome shoes of YSL.

1The Court of Appeals took judicial notice of a recent seizure in its decision (Op. at 28,n. 24), noting that Customs had seized 20,000 counterfeit Louboutin shoes illegallyshipped to the United States, with a retail value of over $18 million. In fact, by the end ofthe Summer of 2012 this number had risen to almost 40,000 pairs of shoes, none of whichcarried the name Louboutin thereon ,i.e., all were stopped by reason of illegal use of the

Red Sole mark.



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There is a strong distinction between the term upper as used by the Court of Appealsand that urged upon the USPTO by YSL. The language being considered by the USPTOcreates rather than reduces ambiguity. Consider the shoe in the picture immediatelybelow.

Picture this shoe with a red outsole that matched the platform just where the toes rest, butwith the remainder of the shoe in the colors shown in the photograph. What then is theupper? Does a shoe such as this with a red sole then become excluded from the protectionafforded the Louboutin Red Sole mark? One where the heel, the heel cup, and otherportions of the shoe are different colors but some part of the forefoot is the same color?This was never before the Court of Appeals and their decision cannot be read in any wayto condone the importation and sale of such a shoe. Yet, again, if the definition of themark now urged by YSL is adopted, whether the shoe pictured with a red sole is excludedbecomes at least arguable.

Finally, consider if the below shoe had a red outsole.

If one adopts the YSLs urged definition of adjoining what portion of the parts -- asthere are several -- constitutes an upper when you look at this image? Once again, theshoe clearly is notmonochromatic. Once again, it is outside of the scope of the Court ofAppeals decision. However, should the proposed language urged by YSL be adopted, it



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then takes what would be clearly an infringing shoe into the realm of questionable. Thisunintended limitation on the mark (which is amply illustrated when shown against themonochrome red) is the very reason that Louboutins proposed language contrasts withthe color of any visible portions of the shoe is a more accurate reflection of the Court of

Appeals ruling and as noted above isprecisely the language used by the Court ofAppeal itself to define upper.

In sum, Louboutins language accurately reflects the decision of the Court of Appeals andits Mandate to the USPTO. The language urged by Louboutin would be clear to thirdparties and enable both Louboutin and such third parties to know precisely what theLouboutin Red Sole mark is, rather than having to discern what is meant by the less clearand ambiguous language urged by YSL. Moreover, the language urged by Louboutin isthe language used by the Court of Appeals because it reflects the evidence before them,red monochrome shoes of YSL-- not some partially red upper portion but with straps,heels or other elements in different colorsbut rather, all red, inclusive of the heel, the

toe, the sides, the entire product matching so as to arguably create a situation in which thered sole does not function as a mark, but merely continues the ornamentation of themonochrome color scheme throughout the product.

The USPTO cannot go further in its proposed definition than the Court provided norshould YSL obtain through such a definition that which they did not obtain as a result ofthe decision of the Court of Appeals.

For all of the reasons stated in our January 4, 2013 letter as well as above, we urge theUSPTO to reject the language initially proposed and urged by YSL and adopt the clearer,more precise language proposed by Louboutin.

We look forward to receiving the USPTOs final determination.

Very truly yours,


Cc: David Bernstein, Esq.



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UNITED STATES COURT OF APPEALS

FOR THE

SECOND CIRCUIT

______________________________________________

At a stated term of the United States Court of Appeals for the Second Circuit, held at theDaniel Patrick Moynihan United States Courthouse, 500 Pearl Street, in the City of New York, onthe 5 day of September, two thousand twelve.th

Before: JOS A. CABRANES,CHESTER J. STRAUB,DEBRA ANN LIVINGSTON, Circuit Judges.

___________________________________________________

CHRISTIAN LOUBOUTIN S.A., CHRISTIAN LOUBOUTIN,L.L.C., CHRISTIAN LOUBOUTIN,

Plaintiffs-Counter-Defendants-Appellants, JUDGMENTDocket No.: 11-3303

v.

YVES SAINT LAURENT AMERICA HOLDING, INC., YVESSAINT LAURENT S.A.S., YVES SAINT LAURENTAMERICA, INC.,

Defendants-Counter-Claimants-Appellees,

YVES SAINT LAURENT, (an unincorporated assocation),JOHN DOES, A TO Z, (Unidentified), JANE DOES, A TO Z,(Unidentified), XYZ COMPANIES, 1 TO 10, (Unidentified),

Defendants-Appellees.___________________________________________________

The appeal in the above captioned case from an order of the United States District Courtfor the Southern District of New York was argued on the District Court's record and the parties'briefs. Upon consideration thereof,

IT IS HEREBY ORDERED, ADJUDGED and DECREED that the order of the DistrictCourt is AFFIRMED in part, REVERSED in part, and REMANDED for further proceedings inaccordance with the opinion of this Court.

Pursuant to 15 U.S.C. 1119 the Director of the United States Patent and Trade Office

MANDATE

MANDATE ISSUED ON 09/27/2012



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shall make appropriate entry upon that Offices records to reflect that U.S. TrademarkRegistration No. 3,361,597, held by Christian Louboutin and dated January 1, 2008, is limited to ared lacquered outsole on footwear that contrasts with the color of the adjoining (upper) portionof the shoe.

For The Court:

Catherine OHagan Wolfe,Clerk of Court


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