On the 29th of October 2019, the Italian fashion brand Valentino S.p.A. (“Valentino”) filed an application for the registration of the trade dress of its Rockstud pump, namely “a three-dimensional configuration of a shoe with a single ankle strap and T-strap and collar which are adorned with pyramid shaped studs”.
Earlier this year, on the 7th of February, the U.S. Patent and Trademark Office (“USPTO”) issued a non-final Office Action, whereby it refused the registration of Valentino’s shoe design, arguing that it fails to function as a trademark (i.e. as an indicator of the source of goods and services), as it “consists of a nondistinctive product design or nondistinctive features of a product design” and is, thus, not registrable on the Principal Register, unless there is sufficient proof of acquired distinctiveness (the three basic types of evidence for acquired distinctiveness are: (a) five years prior use of the mark, (b) prior registrations of the mark in relation to similar goods and (c) other evidence, such as advertising expenses, declarations that assert recognition of the mark as a source indicator, survey evidence, long term use of the mark, market research and consumer reaction studies). Furthermore, the Office stated that the shoe design is “merely a decorative or ornamental feature of [Valentino’s products] and, thus, does not function as a trademark to indicate the source of [Valentino’s products] and to identify and distinguish [Valentino’s products] from those of other brands”. Therefore, according to the USPTO, it cannot be registered as a trademark.
It is interesting to note that, although Valentino asserted acquired distinctiveness of its Rockstud pump design, on the basis of the mark’s extensive use in commerce since its debut in 2010, the Office held that “the allegation of five years’ use is insufficient to show acquired distinctiveness because the applied-for mark is highly ornamental and common on shoes” and, as a matter of fact, brands “commonly use studs along the tops and along straps of shoes as a decorative feature of shoes”. In other words, according to the USPTO, ornamental and nondistinctive features of goods are perceived by consumers as such and not as trademarks, i.e. source indicators.
In a much anticipated response, Valentino’s General Counsel, Giacomo Leo, submitted a 227 page document, in which the brand argues that the Rockstud pump design is “instantly recognized by consumers as a symbol of Valentino’s high-quality products, reputation, and goodwill” and, therefore, should be registered as a trademark to the Principal Register. More specifically, Valentino claims that “the Rockstud shoes come in different instantly recognized styles, including the Rockstud ankle strap shoe, which has been continuously and extensively marketed, promoted, and sold by Valentino” and that “the Rockstud ankle strap shoe has been a mainstay on store shelves for over a decade, highlighting their strength in the market and constant profitability”. Valentino underlines that the ankle strap shoe has generated considerable revenue for the company and that it has invested millions of dollars in promoting the sales of the Rockstud pump in a wide variety of media. Among the evidence accompanying the declaration, Valentino submitted proof of extensive third-party press and unsolicited media coverage, such as in outlets like Vogue, Harper’s Bazaar and The New York Times.
It is interesting to note that, in its argumentation, Valentino pointed to the famous Louboutin case (Christian Louboutin S.A. v. Yves Saint Laurent Am. Holdings, Inc., 696 F.3d 206, 226 (2d Cir. 2012)), where the U.S. Court of Appeals for the Second Circuit held that Louboutin had demonstrated evidence that the public associated the lacquered red sole of its shoe with Louboutin. More specifically, General Counsel argued that Valentino has enjoyed similar success for the Rockstud ankle strap shoe, which has acquired distinctiveness (secondary meaning) among the general public.
To support its position, Valentino also referred to the Bottega Veneta case (In Re Bottega Veneta Int’l S.A.R.L., No. 77219184, 2013 WL 5655822 (TTAB 2013)), which examined the protectability of a weave design (also known as the “Intrecciato”), essentially a specific way of interweaving leather that can be applied to several different goods. The Board acknowledged that, due to the success and exposure, such pattern indicates the source of the goods. Valentino claims that “the Rockstud ankle strap shoe is even more distinctive than the “weave design” in Bottega Veneta, as the distinctive features on Valentino’s Rockstud ankle strap shoe is not merely a pattern, but rather it is a mark comprised of several elements: the shape of the leather shoe, the shape of the studs, the number and positioning of the studs, that together indicate the source of the shoes”.
Valentino’s Rockstud pump design is yet another case where a brand attempts to register an “unconventional”, “exotic” trademark, which arguably “stretches” the boundaries of trademark protection and highlights the fine balance between protecting consumers and rightsholders on the one hand, and safeguarding free competition in a very creative market (where ornamental and decorative elements are essential) on the other. The Office’s response to Valentino’s declaration is highly anticipated.
By Alexandra Varla, Founder “Tailored: Law & Business in the Fashion & Luxury Industry”