Louis Vuitton has filed an interesting new trademark lawsuit in a federal court in Texas, accusing “upcycler” Sandra Ling Designs, Inc. and its owner Sandra Ling (collectively “SLD”) of engaging in trademark counterfeiting, infringement, and dilution, in connection with its practice of offering up handbags, apparel, and accessories that bear Louis Vuitton’s famed trademarks but that are not “authorized, sponsored, or approved by Louis Vuitton.” According to the complaint that it filed with the U.S. District Court for the Southern District of Texas on February 2, Louis Vuitton claims that SLD is in the business of offering up apparel and accessories made from “material obtained from purportedly authentic pre-owned, disassembled, and deconstructed Louis Vuitton items,” and “purportedly authentic pre-owned Louis Vuitton items that have been fundamentally altered by the addition of decorations such as tassels, stones, or beading” – all of which continue to bear Louis Vuitton’s trademarks.
The problem, counsel for Louis Vuitton argues, is that due to the “material alterations” that SLD makes to the upcycled apparel, handbags, and accessories, the resulting products that the defendants offer up for sale – which continue to “prominently display” Louis Vuitton trademarks – “do not meet Louis Vuitton’s strict quality standards,” and thus, are “no longer genuine Louis Vuitton products.”
Against this background, Louis Vuitton claims that “consumers encountering [SLD’s] infringing products are likely to mistakenly believe that these products are Louis Vuitton products, or are authorized, sponsored, approved, endorsed or licensed by Louis Vuitton, or are otherwise affiliated, associated, or connected with Louis Vuitton.” This confusion is “likely to occur at the point of sale and in the post-sale context,” the brand argues, alleging that SLD has “undertaken this conduct in bad faith … with the deliberate intent to mislead consumers and improperly trade off and reap the benefits of the extensive goodwill associated with the Louis Vuitton brand and Louis Vuitton’s world-famous trademarks.”
Louis Vuitton claims that despite putting SLD on notice of its infringement and counterfeiting back in 2019 via a cease-and-desist letter, the defendants have continued to offer up Louis Vuitton trademark-bearing goods and “despite multiple extensions of time to respond and repeated follow up inquiries by its counsel, Louis Vuitton has not received a substantive response from the defendants.”
With the foregoing in mind, Louis Vuitton sets out claims of trademark counterfeiting and infringement, trademark dilution, and unfair competition, claiming that unless its “unlawful conduct is enjoined,” SLD will continue to “severely inhibit and/or destroy the ability of the Louis Vuitton trademarks to identify Louis Vuitton as their exclusive source, resulting in irreparable harm to Louis Vuitton.” As such, the brand is seeking injunctive relief to immediately and permanently enjoin SLD from “using the Louis Vuitton trademarks, or any reproduction, counterfeit, copy, or colorable imitation thereof to identify any goods or the rendering of any services not authorized by Louis Vuitton,” among other things.
In addition to removing such infringing and counterfeit goods from their website and social media accounts, Louis Vuitton is seeking an order from the court that SLD “post on their website and social media sites a copy of this Court’s injunction against its unlawful activities.”
As for monetary damages, Louis Vuitton asserts that it is entitled to “all profits that [SLD] realized from the unauthorized use of the Louis Vuitton trademarks,” or alternatively, statutory damages of up to $2 million per counterfeit mark per type of goods sold, long with costs and attorneys’ fees.
The case is Louis Vuitton Malletier, S.A.S., v. Sandra Ling Designs, Inc., et al., 4:21-cv-00352 (S.D. Tex.).