With the recent success of Christian Louboutin enforcing their trademarked red-soled shoes, it seems like other companies are taking their chances on similar protection.  Reginald Bendolph, a shoe company based out of Irvington, New Jersey, recently filed a trademark application on shoes with the sole painted green.   The company cites that their first use of a green sole on shoes dates back to March 2017 in their application. 

There are some considerations that the United States Patent and Trademark Office (USPTO) may take into account in their review of the application.  First, in at least some of the Christian Louboutin decisions, the courts have concluded that consumers associate the red-soled shoes with the French designer.  Can the same be said for Reginald Bendolph?  The brand does not appear to advertise, does not have a media-driven spotlight surrounding its product and apparently has not been subject to copying by others attempting to capitalize on the brand's design and reputation.  Furthermore, the drawing used by Reginald Bendolph in their trademark application is almost an exact replica of the drawing used by Christian Louboutin in their 2007 application to protect their red-soled shoes (see picture).

However, trademark attorneys in the United States do not foresee the nearly identical drawings to have any effect on the application's registrability, as the drawing itself clearly identifies what Reginald Bendolph seeks to protect in its trademark application, and with the colour being obviously different, does not lend itself to confusion with Christian Louboutin.

The USPTO's handling of the application will be watched closely by intellectual property regimes around the world and dissected by legal practitioners and fashion designers that may be affected by it.

 

Picture Source: http://www.thefashionlaw.com/home/a-budding-young-brand-wants-to-register-its-green-sole-as-a-trademark-with-louboutins-drawing.

Summary By: Hashim Ghazi

E-TIPS® ISSUE

19 03 06