Arc’teryx has announced the impending release of its first-ever trail shoe, the Norvan VT, and it just might land the Canadian outdoors brand on the receiving end of a lawsuit. At issue: the vertical red stripe that runs along the tongue of the shoe. As you may know, that is a design element that appears on the tongue of the vast majority of Prada lace-up sneakers (and elsewhere on other Prada designs). What you may not have known is that Prada has federal trademark registrations in the U.S. and the European Union for the red stripe in the class of goods that covers footwear.
With such trademark registrations in place, it seems as though this might be a relatively easy win for Prada if it can show that consumers are likely to be confused as to the source of the Arc’teryx shoes (the key inquiry in a trademark infringement lawsuit). As the U.S. Patent and Trademark Office has stated, “likelihood of confusion exists between trademarks when the marks are so similar and the goods and/or services for which they are used are so related that consumers would mistakenly believe they come from the same source,” which is arguably at play in the hypothetical case at hand, particularly given the rise in frequency of collaborations between brands.
Assuming for a moment that Prada did not have federal trademark registrations for its red stripe, would it still have a (hypothetical) case? Probably. In the Louboutin vs. Yves Saint Laurent lawsuit several years ago, in which the court upheld the validity of Louboutin's red sole trademark (or better yet, trade dress, a subset of trademark law that provides protection for the appearance of a design if it serves the same source-identifying function as a trademark) as long as it contrasts with the color of the body of the shoe. With this in mind (and more importantly, the Qualitex Co. v. Jacobson Products Co. case, for the legally-minded among us), it seems reasonable to suggest that if a brand has a well-known trade dress in place that embodies a color, it very well may be subject to protection.
In order for non-distinctive trade dress to be protected, it must be well-known (or in legal terms, it must have acquired secondary meaning, which means that consumers associate the design feature (the red stripe in our case) with a particular producer). An array of circuit courts, including New York’s Second Circuit, look to the following factors to gauge secondary meaning: advertising expenditures; consumer studies linking the mark to the source; unsolicited media coverage of the products; sales success; attempts to plagiarize the mark; and length and exclusivity of the mark’s use.
Looking to Prada’s red stripe, which more often than not, bears its brand name in white lettering, it is clear that the Italian design house has made use of this mark for at least 15 years or so. The stripe design has appeared (and continues to appear) on Prada garments and accessories, such as the Luna Rossa America's Cup Sailing jackets, which it began making in 2003, and corresponding ad campaigns; on an array of footwear, which has featured the red stripe since at least 2001, either on the tongue of the shoe, on its sole (which is protected as a trademark in the U.S. and the European Union) or on the insole; and on the arms of sunglasses. The mark has also appeared on Prada fragrance bottles and packaging, such as shoe boxes or dust bags, and on the tags of its garments, for many years. This is all to say that Prada’s red stripe mark likely meets the requisite secondary meaning standard and could sustain a trade dress infringement suit even without the existing registrations.
As for whether Prada will file suit against Arc’teryx in connection with its Norvan VT, that is unclear at the moment, but stay tuned …