LVL XIII Brands, Inc. v. Louis Vuitton Malletier SA
720 F. App'x 24
| 2d Cir. | 2017Background
- LVL XIII Brands sued Louis Vuitton under the Lanham Act § 43(a) for trademark infringement, unfair competition, and false designation of origin over a rectangular metal toe-plate on LVL’s sneakers.
- District Court (Engelmayer, J.) granted summary judgment for Louis Vuitton, finding LVL’s mark did not merit protection.
- On appeal LVL argued the toe-plate was a protectable mark (inherently distinctive or with acquired secondary meaning) and challenged admission of Louis Vuitton’s consumer survey.
- The Second Circuit reviewed summary judgment de novo and evidentiary rulings for abuse of discretion.
- Court treated the toe-plate as a product design feature (not an inherently distinctive logo) and required a showing of secondary meaning.
- The court also affirmed admission of the survey, finding methodological criticisms went to weight not admissibility and any Rule 26 omissions did not warrant preclusion under Rule 37.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether LVL’s toe-plate is a protectable mark | Toe-plate is a distinctive symbol/logo deserving protection | Toe-plate is a commonplace product-design feature lacking inherent distinctiveness | Held not inherently distinctive; classified as product design requiring secondary meaning |
| Whether LVL proved secondary meaning | Advertising, sales, media, and consumer recognition show source-identification | Record insufficient under Christian Louboutin factors to show secondary meaning | Held LVL failed to demonstrate secondary meaning; summary judgment for Louis Vuitton |
| Whether court needed to reach likelihood of confusion | LVL argued confusion exists between marks | Defendants argued threshold distinctiveness/secondary meaning not met, so confusion irrelevant | Court did not reach likelihood-of-confusion because mark lacked protection |
| Admissibility of Louis Vuitton’s consumer survey | Survey is methodologically flawed and should be excluded | Methodological flaws go to weight; noncompliance with Rule 26 did not prejudice LVL enough for preclusion | Held survey admissible; district court did not abuse discretion in admitting it |
Key Cases Cited
- Christian Louboutin S.A. v. Yves Saint Laurent Am. Holdings, Inc., 696 F.3d 206 (2d Cir. 2012) (articulates factors for secondary meaning analysis)
- Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992) (distinguishes inherent vs. acquired distinctiveness)
- Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101 (2d Cir. 2001) (product-design marks require secondary meaning)
- Star Industries, Inc. v. Bacardi & Co., 412 F.3d 373 (2d Cir. 2005) (common shapes are not inherently distinctive)
- Schering Corp. v. Pfizer Inc., 189 F.3d 218 (2d Cir. 1999) (methodological challenges to surveys generally go to weight not admissibility)
- Patterson v. Balsamico, 440 F.3d 104 (2d Cir. 2006) (prejudice required to exclude evidence for Rule 26 noncompliance)