Thursday, December 28, 2006

My new favorite trademark puzzle

A great conceptual puzzle: Louis Vuitton is suing Dooney & Bourke over similar handbag designs. After remand from the Second Circuit and the TDRA, state and federal confusion and dilution claims are all in play. Except: D&B has a registration for the DB logo with the D&B intertwined, which under the TDRA bars dilution claims based on use of that mark.

So, it would seem, the dilution analysis will have to ignore any dilutive effect resulting from the linked initials in the accused handbag design. I have no idea how that could be done – testing a mock bag with just blobs of color, or made-up initials, to look for the dilutive effect of color and arrangement alone seems like a bad idea, in part because the logo effect of the DB may well be anti-dilutive, in that it provides consumers a separate reference point other than Louis Vuitton. I’d be curious to hear anyone else’s thoughts.

If a registration really does provide immunity from dilution claims based on use of a mark, can that immunity be defeated by claiming dilution of a broader trade dress where the mark is only one component of the allegedly infringing dress? This isn’t like a copyright/trademark conflict, where you can finesse solutions based on concepts like “use as a mark.” D&B has the federal right to use the DB logo as a mark for handbags, free of any dilution claims. Is that right as extensive as Louis Vuitton’s?

Given that plaintiffs have lots of freedom to define their trade dress to fit the facts of any given case, we are likely to encounter more cases of partial preemption in the future. Perhaps we’ll get some guidance about that from this case.

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