LVL XIII v. LOUIS VUITTON: THE TOE PLATE FIGHT RAGES ON

This past June, LVL XIII (“pronounced Level Thirteen”) brand shoes filed suit against Louis Vuitton Moet Hennesey (“Vuitton”) accusing Vuitton of infringing its trademarks and trade dress by applying metal nameplates to the toes of the footwear in their “On the Road” footwear collection. As of July, Vuitton had only limited responses to these allegations stating, “The lawsuit is entirely without merit, and the company will vigorously defend itself.” The company let the response deadline nearly run out before requesting a 30-day extension from Judge Paul Engelmayer in the U.S. District Court for the Southern District of New York. It appeared that this was Vuitton’s only attempt to “vigorously defend itself” until now.

Last week Vuitton filed a declaratory judgment counterclaim, alleging that LVL XIII has no “exclusive right to use a rectangular shaped metal accent plate on the front of the toe of footwear.” Vuitton argues that the metal toe plate has been used by other brands including Vuitton for several seasons prior to LVL XIII’s existence.

As if the declaratory judgment counterclaim was not enough, Louis Vuitton requested the court order LVL XIII to amend its pending trade dress application to include a disclaimer that will reflect they do not have the exclusive right to use the metal plate across the front of the shoe toe. The disclaimer would read as follows: “No claim is made to the exclusive right to use THE RECTANGULAR SHAPE OF THE SHOE TOE PLATE apart from the mark as shown.” LVL XIII’s exclusive right only extends to the way in which they are using the toe plate i.e. toe plates with screw details that bear the words “LVL XIII” on them and not to toe plates in general. This means Vuitton’s use of metal plates would not fall within the scope of LVL XIII protection because Vuitton’s plates have no screws nor do they bear the words LVL XII.

It is important to note that no federal registration has been issued to LVL XIII. This is vital because it limits the rights to which LVL XIII can claim trade dress protection to only engraved toe plates with the screw details and specifically where LVL XIII is using those toe plates. They have not acquired national rights. Thus, as it stands right now Vuitton is free to use their toe plates as LVL XIII’s rights are currently geographically limited.

By: Nicole Harris, Associate Editor of Art, Publishing, Music & Fashion

Photo Credit: http://lawyerinlanvin.com/?p=2996

Regarding all information provided and referred to herein, credit shall be given to the following sources:

http://www.thefashionlaw.com/louis-vuitton-is-going-to-take-down-footwear-brand-that-claims-it-copied/