The trademark battle between Louis Vuitton Moet Hennessy-owned Hublot and Los Angeles-based jeweler Chris Aire is still underway. You may recall that Aire filed suit against 17 watch brands, including Rolex, LVMH on behalf of Hublot and Louis Vuitton, Breitling, and Chopard, for trademark infringement in connection with the term “Red Gold” in 2010.
In April, Hublot’s legal team moved for summary judgement (essentially asking the court to rule in its favor before the parties go to trial) on Aire’s trademark infringement claim, as well as its own counterclaim, which seeks to invalidate Aire’s mark, claiming that “red gold” is a generic term that has been used by jewelers to describe a red-tinted gold alloy, and should be cancelled.
Last month, Judge Dolly M. Gee of the U.S. District Court for the Central District of California declined to dismiss the case, holding that the issues need to be decided by a jury and stating that while "red gold" was certainly a generic term when Aire started using it in 2003, there is a chance it has become distinctive as a result of Aire's use of the mark.
Now, the LVMH subsidiary wants the Ninth Circuit to weigh in on whether Aire's “Red Gold” mark is, in fact, valid. In its bid for interlocutory review, which was filed last week, LVMH stated that Gee's ruling is a not in line with the current understanding of trademark law and moreover, a deviation from the precedent of the Ninth Circuit.
Under the prevailing understanding of trademark law, once a mark becomes generic (aka loses its distictiveness), it is thereby devoid of trademark protection, which cannot be reclaimed. LVMH argues that "almost every court across the county" has endorsed the idea that once a trademark becomes generic, it can never be used as a trademark.
“There are strong policy reasons supporting the 'once generic, always generic' rule this court has seemingly rejected,” LVMH further argued in its motion. “To grant trademark status to a generic term essentially gives a single user a monopoly and prevents all other manufacturers from accurately identifying their products.”