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OCTOBER 2011

Trademarks Law - US

  If you are able to do so, please detailany significant clients/cases your firmundertaken by your firm in the pastyear.

Marcus Stephen Harris, LLC successfully defendeda global sunglass design company against falseallegations of copying made by an internationalluxury fashion design house. We also recentlydefended a global cosmetic company against falseallegations of trademark infringement brought by alarge US based cosmetic company.

Most cases like this require creative lawyeringand a real focus on the client’s goals. Smaller clientsinvolved in litigation initiated by much larger globalconglomerates sometimes have goals that seemcounterintuitive. For example, instead of wantingmoney for damages, some simply want apologies orreimbursement for expenses caused by the suit. Inmany cases, it’s not about winning in the traditional

legal sense; it’s about getting the client to a placewhere they feel as if they have proven their point.

   What are the common challenges facedby your clients when involved intrademarks law – e.g. wrongful orgroundless threats of infringement,limits and defenses to claims of infringement, international registrationor enforcement of trademark rights,counterfeiting etc.

While we represent a variety of types of clients,many of our clients are small to mediums sizedbusiness. These types of clients are often faced with

allegations of trademark infringement from largeFortune 500 companies. Often, we find thesethreats to be baseless attempts at intimidationfor the sole purpose of stifling competition.Unfortunately these threats are often timessuccessful. Some clients are simply not well funded

enough to defend themselves from these allegations.Often times it simply makes more sense to changethe name or adopt a different type of productconfiguration than it does to fight the allegations of trademark infringement.

In the past couple of years we have seen inincrease in clients interested in protecting productdesign and configurations through trademark law.Many of our clients are spending thousands of dollars to have innovative product packagingdesigned by specialized design firms (this isincreasingly common in the cosmetics area). Clientsthat have spent hundreds of thousands of dollarsdeveloping unique product packaging are notexcited to see unauthorized copies or counterfeits in

the marketplace. Thechallenge inprotectingproductpackaging anddesign is toutilizeavailableintellectualpropertyschemes toprovideadequateprotection. Manytimes the product

Trademarks are a huge aspect of Intellectual Property, one of 

the most major legal practice areas across the world.

Protecting a business’s trademarks is a way of protecting their

brand and in most cases, success and reputation. A recent

trademark case that has been in the news is that of the lawsuit

filed by Christian Louboutin against Yves St. Laurent,

regarding the colour of its shoe soles, raising the question of 

whether or not a colour can be legally regarded as a

trademark. This month, Lawyer Monthly speaks to Marcus

Stephen Harris, partner at Marcus Stephen Harris,

Chicago-based law firm, about this case and the issues that

surround Trademarks law in the US.

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8/4/2019 Trademarks Law - US Published in Lawyer Monthly Magazine October 2011

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OCTOBER 2011

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designs and configurations simply do not qualify fortrademark protection. Other times, theseapplications are difficult to get through due toheightened standards regarding secondarymeaning. Having meaningful protection is key toenforcing your intellectual property rights.

  In reference to the recent lawsuit filedby Christian Louboutin against Yves St.Laurent, regarding the colour of shoesoles, do you think colors can be classedas trademarks? How far can theboundaries be pushed when it comes towhat counts as a legitimate trademarkand what doesn’t?

Color can function as a trademark if the color isused in a manner perceived by the public asidentifying distinguishable goods and services. Thisis obviously a challenging standard, and most(though certainly not all) color-based trademarkrights are color marks used in connection withgoods, where the color is used on the entire surfaceof the goods, on a portion, or on the packaging. Inthe case of the Christian Louboutin shoes, the redsoles are alleged to be the significant identifier of the Louboutin brand. Protection of the red coloredsoles is intended to prevent competitors fromconfusing consumers with other brands.

In my professional judgment, I would prosecute atrademark application for registration, based on acolor aspect, if the elements of the mark metexisting registrability requirements. As the body of law regarding color marks continues to develop, it is

more likely the fate of future applications will bedifferent from those filed today.

Anything that identifies the source or sponsorshipof a product or service can function as a trademark. As a result the boundaries of trademark protectionare broad by nature. However, the boundaries arealways being pushed. It is well established thatcolors, sounds and product configuration can func-tion as trademarks, but what about fashionsdesigns, flavors or the overall retail experiencepresented by certain stores? The boundaries of trademark protection are constantly being pushedby innovative clients. The results can have asignificant impact on the marketplace. Ideally,trademark law should adjust with the marketplaceand consumer experience.

   With the changing and fluid nature of trademarks law, how can clients avoidthe potential pitfalls? Do you foreseethe need for legislative change in thenext 12-24 months, if so why?

The fluid nature of trademark law is beneficial toconsumers. Anything that consumers readilyunderstand as being an identifier of the source orsponsorship of a product should be grantedtrademark protection. Currently the law allowssuch protection. In the event there is an unreason-able narrowing of such protection and it becomesdifficult for companies to protect “nontraditionaltrademarks” (e.g., colors, sounds, productconfiguration), then legislative change shouldhappen. The Louboutin case is important, as oneof the arguments made in the case is that no onedesigner should be able to monopolize a particularcolor. While that may be true in the broader sense,

Louboutin is seeking to protect something that thepublic has come to understand identifies with theirproduct. This is a basic tenant of trademark lawand something that should not be curtailed via thecourt system. LM

Contact Details:

Marcus Stephen Harris

3500 Chase Plaza

10 South LaSalle StreetChicago, Illinois

60603-1024

Tel: 312 263 0570

Web: www.mshtechlaw.com

More often we are seeing clients interested in

 protecting product design and configurationsthrough trademark law

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Marcus Stephen Harris

Marcus Stephen Harris

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