USPTO Issues Registration Certificates to the Valentino Rockstud Design for Shoes
 |
| Valentino 2013 Fall/Winter Campaign |
Last year, Valentino filed trademark applications with the United States Patent and Trademark Office ("USPTO") for its Valentino Rockstud design. At the time the applications were being reviewed, the examining attorney, in a preliminary office memo, indicated that Valentino Rockstud cannot be federally registered on the Principal Register because its configuration is not distinctive enough to serve as a source identifier. As many of you are already familiar at this point, a mark's source-identifying capacity is the factor in determining the registerability of the mark. To put it simply, the USPTO had reservations as to whether the consuming public at large would associate the Rockstud design exclusively with Valentino when they see the design. In order to defeat the lack of distinctiveness, Valentino was given the chance to demonstrate that the design has gained sufficient secondary meaning in the marketplace.
Valentino's legal team then filed a detailed memo (nearing 200 pages) to the effect that the Rockstud design has indeed gained secondary meaning. By likening its Rockstud design to Louboutin's red sole design, counsel for Valentino emphatically pointed out that the Italian house expended tremendous resources to imbue it with public recognition and the goodwill. In specific, the memo listed various advertising campaigns that are solely dedicated to the Rockstud design since Pierpaolo Piccioli and Maria Grazia Chiuri (then co-creative director) showcased the design in their 2010 Fall/Winter collection. Coupled with extensive marketing both online and offline, General Counsel of Valentino, in his declaration (a written statement of facts a declarant submits as evidence under penalty of perjury), forcefully stated that the design has consistently generated high revenues for Valentino over the years, becoming one of the brand's aesthetic emblems. The memo also argued that the Trademark Trial and Appeal Board ("TTAB") had issued a registration certificate to Bottega Veneta's weaving design despite the initial refusal and that Valentino's case should not be treated differently.
I also believe that Valentino's zeal to police and prosecute counterfeits in connection with the Rockstud design could have played a part. As I discussed in an earlier post, Valentino teamed up with Amazon to ramp up its efforts to stop the circulation of Valentino fakes on the e-commerce market. The USPTO definitely takes into account how a mark holder uses his or her mark in commerce to maintain the goodwill behind the mark. The registration certificates were issued for Class 25, which pertains to footwear, including luxury shoes. Now, with these federal trademark protections for the Rockstud design, Valentino added to its already powerful arsenal of intellectual property another powerful weapon. This surely is a rock-solid success.
Comments
Post a Comment