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From vying for the attention of consumers in an uber-branded marketplace to adding potentially-very-valuable new assets to their branding portfolios, the benefits of adopting colors as indicators of source (i.e., trademarks) are becoming increasingly evident for fashion and luxury brands. While companies like Tiffany & Co.Hermès, and Christian Louboutin have widely-known proprietary hues (and trademark rights in them), newer efforts by Bottega Veneta and Valentino, for instance, have brought color trademarks back into the spotlight. As such, issues that companies face in successfully claiming rights in color marks – and some of the strategies for doing so – are proving to be particularly relevant. 

As I noted in Part I of a Primer on Color Marks, the notion that colors can act as indicators of source is not new, with the ability of companies to rely on trademark law – a form of intellectual property protection that applies to “any word, name, symbol, or device, or any combination thereof” that is used to “identify and distinguish” one’s goods or services from those of others – to protect proprietary hues dating back to Qualitex Co. v. Jacobson Products Co. case in 1995, in which the U.S. Supreme Court decided that a single color can operate as a trademark upon a showing of secondary meaning, and U.S. Court of Appeals for the Federal Circuit’s determination in the Owens Corning case a decade before that. 

Even though it is well-established that companies can amass rights in (and registrations for) single color trademarks, what is a bit less clear is what that actually entails for brands beyond the immediate use-in-commerce element, and what is standing in the way of registration given that just one-third of trademark applications for color marks are registered by the U.S. Patent and Trademark Office (“USPTO”) each year. 

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A recent win for a German electromagnetic component manufacturer provides the latest insight into color trademarks in the European Union, as companies across the board look to distinguish themselves and their offerings by way of signature hues. On the heels of the European Union Intellectual Property Office (“EUIPO”) refusing to register an application lodged by Magnetec GmbH for a light blue hue for use on things like metal alloys, inductive components, and insulating sheaths, and a subsequent loss for Magnetec before the EUIPO’s Fourth Board of Appeal, the European Union General Court handed the Langenselbold, Germany-based company a win in the latest round of a clash over a color trademark.  

Magnetec first filed an application with the EUIPO for “Light blue: RAL 5012” for use in Class 6 (“alloys; non-ferrous metal alloys,” etc.), Class 9 (“magnetic cores; inductive components for the derivation of wave currents; inductive components for motor protection,” etc.), and Class 17 (“insulating sheaths for the electrical covering of cables,” etc.) in February 2019, which an EUIPO examiner refused on the basis that the color trademark lacks the necessary “distinctive character” to act – and be registered – as a trademark. (Article 7(1)(b) of EU Regulation 2017/1001 bars the registration of trademarks that are “devoid of any distinctive character.”)

In its appeal, Magnetec unsuccessfully sought to have the examiner’s decision overturned. Siding with the EUIPO, which determined that the single-color trademark is “not distinctive and will not be perceived by the public as an indication of the commercial origin of the goods to which it relates,” the Board referred the case back to the examiner to “assess the existence of the distinctive character acquired through use of the mark.” 

The blue that Magnetec is seeking a trademark registration for

Fast forward to October 5 and the EU General Court annulled the decision of the EUIPO’s Board of Appeal. Setting the stage in its opinion, the General Court stated that “the distinctive character of a mark within the meaning of [Article 7(1)(b)] means that the mark makes it possible to identify the product for which registration is sought as coming from a specific undertaking, and therefore, to distinguish this product from those of other undertakings.” 

More specifically, the court asserted that in order to constitute a trademark that can be registered by the EUIPO, “Colors or combinations of colors must fulfill three conditions: (1) They must constitute a sign; (2) the sign must be capable of graphic representation; and (3) the sign must be capable of distinguishing the goods or services of one undertaking from those of other undertakings.” 

At the heart of the third prong is distinctiveness, and the judge noted that when it comes to distinctiveness, “Colors and their abstract combinations can only be recognized as inherently distinctive in exceptional circumstances, since they merge with the appearance of the designated goods and are not, in principle, used as means of commercial origin.” As a result, the vast majority of color marks will depend on acquired distinctiveness – or in other words, a showing that consumers directly associate the mark with the applicant as the source of its goods/services due its extensive use and promotion of the mark. 

Here, Magnetec took the position that the light blue hue is “sufficiently distinctive both for the goods for which it was initially applied for and for the goods as specified following the request for limitation submitted to the Board of Appeal.” Meanwhile, the EUIPO has argued that the color-centric trademark lacks distinctiveness and thus, does not function as an indicator of source. 

Given that “the distinctive character of a mark must … be assessed in relation to the perception that the relevant public has of it,” as well as in relation to the goods or services for which registration is sought, the court focused its attention on the parties’ characterizations of the “relevant public.” Magnetec, for one, alleged that the purchasers of the goods in question are “professionals with a high degree of attention and technical knowledge in the field of electrical engineering,” while the EUIPO asserted that the goods at issue “are not aimed solely at a particular professional public with a heightened level of attention and technical knowledge in the electronic field.” As for how the Board of Appeal viewed the “relevant public,” it fell short in providing an appropriate definition, according to the General Court. 

In its decision this month, the General Court found that the Board “did not define the relevant public” targeted for all of the goods in Classes 6 and 9 for the purpose of gauging distinctiveness – or defined it in an ambiguous manner, which ultimately serves to impair its “entire reasoning as regards the assessment of that distinctive character.” Accordingly, the Board’s decision “must be annulled in its entirety,” the General Court held. 

THE BIG PICTURE: While this round is, in fact, a win for Magnetec, the implications are not likely to be sweeping in terms of the protectability of single-color trademarks. Eleonora Rosati, the Director of the Institute for Intellectual Property and Market Lab at Stockholm University, tells TFL that “since the court reiterates that [color marks] can only be registered on an exceptional basis,” the bar for registration here remains high. At the same time, the court indicates (and the key takeaway here is) that “distinctiveness needs to be evaluated not in abstract terms, but rather having regard to the average consumers – and in this case, the EUIPO failed to identify them properly,” Rosati says. 

As far as fashion brands are concerned, the position in the EU seems to favor “not distinguishing between different categories of consumers,” per Rosati, who notes that “only a few weeks ago the EUIPO rejected Dior’s argument” – in favor of registration of its Saddle bag design – “that luxury consumers would be more attentive than consumers of other fashion goods.” 

(Dior argued that given the “luxurious and expensive” nature of its offerings, the “relevant” consumer is part of “an audience of insiders and/or well-to-do and not at an average consumer.” As such, “it is undeniable” that consumers “will show high or at least above-average attention.” Siding with the EUIPO, the Second Board of Appeal took issue with the way the French fashion house defined relevant consumers, noting that while some of its goods “may be particularly expensive,” there is a “wide range of prices of the products in question,” which widens the pool of potential consumers beyond “the subset of articles of an exclusive nature put forward by [Dior].”)

If this continues to be the approach, one which Rosati says that she is “not sure is entirely correct,” then from a color trademark perspective, the “only way” for brands to obtain registrations for such marks is by relying on acquired distinctiveness and “the (high) evidentiary threshold” that comes with it, which may not prove to be attainable for the vast majority of brands. 

PART I – In March, Valentino showed a collection that consisted of almost 50 looks – from “tiny bubble dresses to sweeping opera coats to tailored suits and overcoats,” Vogue’s Sarah Mower wrote at the time – all in a hue that the Italian fashion brand is calling “Pink PP.” Creative director Pierpaolo Piccioli said that he opted for the vivid fuchsia-like shade for Fall/Winter 2022 in order to “remove distractions and concentrate the viewers’ eyes on distinguishing the differences between silhouette and detail.” Pink PP-hued garments have since found their way onto red carpets and into social media discourse – with consumers routinely commenting on the influx of “Valentino Pink” looks.   

There certainly may be design-centric reasons for the selection of a single color and the creation of a collection almost entirely in that single hue, as Piccioli says. But there is likely more to it than that. It is difficult not to see the branding angle at play for Valentino, which has since put the specific hot pink color that it crafted with the help of color-creating-powerhouse Pantone at the center of product packaging, ad campaigns, and “guerrilla projects to be executed globally.” Valentino has also taken to offering up hot-selling accessories in the new hue (and styling them on big-name celebrities) – from its $1,500 Vani Tan-Go Platform Pumps in pink, which have found their way onto the likes of Anne Hathaway, Gigi Hadid, Dua Lipa, and Florence Pugh, among others, to a specific Pink PP version of its One Stud shoulder bag.

A Bottega Veneta shoe and a Valentino sneaker

The element of branding is worthy of attention here, as colors are valuable assets for brands. One need not look further than Bottega Veneta, whose shade of “Bottega green” has dominated the fashion market over the past several years, being deemed the “color of the year” for 2021 by no shortage of media outlets. Thanks to a steady stream of “it” accessories and broader branding efforts by Bottega Veneta to incorporate the color into its ad campaigns, large-scale installations (including a takeover of the Great Wall of China), stores, and branding for its “Bottega Radio” venture, a connection between the hue and the Kering-owned brand was formed in the minds of consumers across the globe. 

Taken together, “Bottega Green” has come to serve as a designation for the fashion and leather goods company in largely same way as its name and signature intrecciato weave design have for decades. 

Color as a Calling Card

The notion that colors can act as indicators of source is, of course, not a novel one. The ability of companies to rely on trademark law – a form of intellectual property protection that applies to “any word, name, symbol, or device, or any combination thereof” that is used to “identify and distinguish” one’s goods or services from those of others – was confirmed by U.S. Supreme Court back in 1995. In deciding Qualitex Co. v. Jacobson Products Co., a landmark case that centered on the protectability of the green-gold shade of Qualitex’s dry cleaning press pads, the Supreme Court explicitly stated that a color can be registered as a trademark as long as it identifies a single source for the products/services at issue. 

Writing for a unanimous court, Justice Stephen Breyer asserted at the time that while “color [sometimes] plays an important role (unrelated to source identification) in making a product more desirable, sometimes it does not.” According to the court, the latter instance (i.e., when a color is “not essential to a product’s use or purpose and does not affect cost or quality”) demonstrates that there is not an absolute bar to the function and protectability of color as a trademark. 

A decade earlier, in 1985, a panel of judges for the U.S. Court of Appeals for the Federal Circuit held that the color of insulation-maker Owens Corning’s pink fiberglass materials (Pantone 210) was entitled to federal registration by the U.S. Patent and Trademark Office (“USPTO”). The court was swayed by the substantial evidence of acquired distinctiveness provided by Owens Corning, including advertising expenditures exceeding $42 million and a survey data showing that 50 percent of respondents named Owens Corning as the only manufacturer to offer up pink insulation.

Qualitex and Owens Corning are not the only examples of companies that have built their businesses on – and looked to register – color trademarks. In addition to enjoying longstanding common law rights as a result of its consistent use of a specific color for the purpose of source identification, Tiffany & Co. has maintained federal registrations with the USPTO and other trademark offices for its robin’s egg blue color (Pantone 1837) for use on an array of goods and services – ranging from fragrance products, tableware, and leather goods to product packaging and retail services … and of course, jewelry since at least the 1990s. (Tiffany’s use of its signature blue dates back to at least 1889 and the World’s Fair in Paris.)

Swatches of companies' color trademarks

Christian Louboutin also famously maintains trademark rights in the “Chinese red” (Pantone 18-1663) hue for use on the soles of contrasting-color shoes. (In its September 2012 opinion in the Louboutin v. Yves Saint Laurent case, in which it held that a single color can be registered as a trademark upon a showing of secondary meaning, the U.S. Court of Appeals for the Second Circuit determined that Louboutin’s famous red sole trademark for footwear is valid – albeit only when the red sole mark contrasts with the color of the rest of the shoe. At the same time, the Second Circuit affirmed the lower court’s refusal to levy a preliminary injunction against YSL in connection with its sale of monochromatic red shoes on the basis that the all-over red shoes fall outside the scope of Louboutin’s trademark rights.)

Beyond that, Hermès has built up rights in (and has registrations for) a shade of orange as applied to “the exterior of merchandise boxes for goods” ranging from handbags and clothing to jewelry and fragrances, as well as for retail store services; and millennial beauty brand Glossier has rights in specific uses of its millennial pink (Pantone 705 C), namely, on cosmetics-related product packaging. 

Outside of the fashion world, UPS has trademark registrations dating back to 1998 for its “Pullman” brown color “applied to the vehicles … [for] motor vehicle transportation and delivery of personal property,” and “applied to the clothing,” in connection with the “delivery of personal property by air, rail, boat and motor vehicle.” The shipping/receiving and supply chain management company also boasts registrations for the word “Brown” for use on “headgear, namely, baseball hats and caps, and visors; shirts; all used in connection with promoting or providing transportation and delivery services.” 

Still yet, T-Mobile has registrations for the shade of magenta that appears across its brand – for use on “telecommunications and information technology services,” among other things. Coca-Cola consistently uses its red hue in furtherance of its sale of soda, with James Sommerville, Cola-Cola’s former VP of global design, saying that the company’s use of its color red across the Coca-Cola ecosystem “reminds consumers that regardless of the beverage they purchase, they’re buying into Coca-Cola as a simple idea.” And the list of companies that use color as their calling card goes on. 

Color Trademarks in a Crowded Market

With Bottega Veneta, Valentino, Tom Brady’s brand (which debuted a Pantone-created “Brady Blue” (Pantone 112-22) last year), and watchmaker IWC, among others, currently pushing relatively new color trademarks, the adoption of color-centric branding appears to be finding favor among a growing number of companies at the moment. This makes sense, as against the background of a crowded market, in which consumers are inundated with branding, rebranding, co-branding, etc., the onus is on companies to not only stand out but to engage consumers, who will (at least in theory) help them to advertise their company and its products/services even further. As such, these recent embraces of color as an indicator of source by fashion industry/luxury players come as part of a bigger push by companies to go beyond – or better yet, to complement – their most obvious trademarks (namely, word marks and logos) with additional branding in order to denote the source of their goods/services in buzzy ways. 

Color swatches from Valentino, Tom Brady, and IWC

In this vein, color marks are also surely a strategy for coping with the state of the fashion/luxury goods market, which is thoroughly saturated with an abundance of trademarks – even ones that go so far as to mash two companies’ existing branding together; Fendace comes to mind here. (The sheer scope of trademarks that are currently in use by consumer goods/services companies makes it difficult, as some academics have argued, for brands to adopt attractive new marks, potentially forcing them to branch out beyond things like word marks to better capture consumer attention.)

At the same time, as TFL has asserted in the past, companies’ exercises in less conventional (although, not entirely unconventional) branding are also a response to the overarchingly visual nature of the Instagram and TikTok-dominated market and the consumers that comprise it. The pool of fashion/luxury buyers has come to include demographics like millennials and Gen-Z; these are consumers that face an endless barrage of ads, that engage with brands far more than previous generations, and that expect/demand more from companies. This extends to branding – hence, the success of Off-White, which has successfully adorned its offering with novel takes on trademarks, such as quotation marks and zip ties, and Glossier with its easily-identifiable pink-bubble-wrap pouches. 

Ultimately, branding is no longer just a tool for companies to distinguish their goods/services from those of their competitors (although, that it the critical function of trademarks) and consumers now interact with companies and their branding in ways that go pure source-identification thanks to the rise of smart phones and other tech. As such, branding enables companies to connect with consumers in new, engaging, and ideally, viral ways. And companies – from Qualitex to Valentino – appear to see clear value in the adoption and consistent use of color (piggybacking on top of what they are already doing with their source-identifying word marks, logos, patterns, etc.) to distinguish themselves and their offerings from others – as well as to potentially cut through some of the noise in the process … ideally, by creating noise of their own. 

This is Part I of a longer-running series on color trademarks. In Part II of this series, we will examine the issues that companies face in claiming rights in color marks and relevant strategies for successfully doing so. 

A Chinese court has handed Christian Louboutin a win in battle over its red sole trademark. In a decision dated September 9, the Beijing Intellectual Property Court determined that defendant Guangdong Wanlima Industrial Co., Ltd. – a Shenzhen Stock Exchange-listed company in the business of designing, researching, production, manufacturing, and marketing leather products – ran afoul of China’s Anti-Unfair Competition Law by intentionally and “maliciously” offering up high-heel footwear bearing a red sole that mirrored the design and the well-known red sole of Louboutin’s shoes, thereby, giving rise to the chance that consumers will be confused as to the source of the shoes and/or their connection to Louboutin. 

Setting the stage in its recently-released decision, the Beijing IP Court stated that Louboutin filed suit against Guangdong Wanlima Industrial Co., Ltd. (“Wanlima”), pointing primarily to the Guangzhou-based company’s sale of a variety of women’s shoes with “the same or similar trade names and red sole decoration” as its own red-soled stilettos by way of its official flagship store on Alibaba’s Tmall, as well as at New World Department Stores. The defendant’s sale of the lookalike footwear is particularly problematic in light of the “high reputation” of its red-soled shoes “in China and around the world,” Louboutin argued, alleging that its footwear – and its red sole trademark – is “well known to the relevant public,” and as a result, Wanlima had violated Article 6(1) of China’s Anti-Unfair Competition Law. 

Article 6(1) of the Anti-Unfair Competition Law of China (2019 Amendment), which prohibits parties from offering up products that are confusingly similar to those of others, including by way of “a label [that is] identical or similar to the name, packaging or decoration … with certain influence.” 

Siding with Louboutin, the Beijing IP Court held in a first-instance judgment that based on evidence submitted by the French brand, its red soled shoes and its red sole “decoration” amount to trademarks with “a certain influence.” Specifically, the court held that Louboutin submitted evidence showing that it has “actually sold footwear products in mainland China since 2011,” with a sales volume of more than RMB 900 million ($129.9 million) for its footwear, as well as evidence of third-party media coverage of its red-soled shoes from “many well-known media across [China], covering many parts of the country.”

This evidence was “sufficient to prove that [Louboutin’s] ‘red sole shoes’ product and red sole decoration have a high market reputation, have established solid connections with the relevant public, and have the distinctive feature of distinguishing the source of the product,” the court held. As a result, Louboutin’s “red soled shoes” trademark and the decoration with the sole color meet the “certain influence” bar set out by Article 6(1) of the Anti-Unfair Competition Law, according to the court, making Wanlima’s use of “the same or similar logos with the trade name of ‘red sole shoes’ and the decoration of red soles” a violation of the law. 

With the foregoing in mind, the Beijing IP Court issued an injunction in Louboutin’s favor, requiring Wanlima to immediately and permanently cease its sales of red-soled footwear and to pay Louboutin damages to RMB 5 million ($721,855) and legal expenses of RMB 445,000 ($64,245). 

One of Wanlima's shoes that infringes Louboutin's red sole trademark
One of Wanlima’s red sole shoe styles

Louboutin’s win follows from a 2020 victory when the Supreme People’s Court of China ruled in favor of the brand. Confirming a decision from Beijing Higher People’s Court, which overturned an earlier determination of the Chinese National Intellectual Property Administration, the Supreme People’s Court held that even though single color marks are among the types of marks that are listed as protectable under Article 8 of the Chinese Trademark (which explicitly lists “combinations of colors” as eligible for registration), Louboutin’s red sole still amounts to a protectable mark. In that case, Supreme People’s Court was swayed by Louboutin’s submission of evidence showing that its red sole had acquired distinctiveness in the minds of Chinese consumers.

As the Beijing Higher People’s Court determined – and the Supreme People’s Court subsequently affirmed, Louboutin’s use of a single color on the soles of its shoes “is not excluded by the law from being registered as a trademark,” as long as the consuming public has come to associate the red shoe sole with a single source, something that Louboutin can establish by showing that it has been using the mark on goods in China for a while, that it has advertised its mark there, and consumers have, in fact, come to associated the red sole with a single source (which can be established by way of consumer surveys).

The court’s decision in the earlier case “opened a door for business owners to pursue trademark registration protection of non-traditional trademarks with sufficient distinctiveness,” Steve Zhao and Pei Lyu of the Beijing-based AnJie Law Firm stated at the time. 

The more recent outcome is the latest in a line of trademark and unfair competition cases (including one involving the shape of Chanel’s No. 5 fragrance bottle) that are resulting in wins for non-native brands, and thus, are proving to be beneficial not only for Louboutin but other brands, as well. Unfair competition cases, for one thing, are becoming “a valuable enforcement method for foreign companies to enforce intellectual property rights in China” – both when they have trademark registrations to point to (as Louboutin does) and also “when trademarks are unavailable, such as in the earlier New Balance/Barlun case,” according to Aaron Wininger, the director of Schwegman Lundberg & Woessner’s China Intellectual Property Practice.

As we noted in connection with the outcome in the Manolo Blahnik trademark case, which saw the Supreme People’s Court of China invalidate a China-based individual’s bad faith trademark registration targeting the famous footwear brand in July (a decision that is likely to pave the way for Blahnik to engage in a major expansion effort on the Chinese mainland), the Chinese National Intellectual Property Administration and Chinese courts at various levels, alike, are increasingly dealing wins for non-native brands that have become especially well known in other markets.  

The result is likely to be increased confidence and investment in the Chinese market by Western brands, particularly as China continues to be a hot bed for luxury goods sales (even if it is currently being plagued by the impact of COVID lockdowns). Sales of personal luxury goods in mainland China grew by 36 percent year-over-year in 2021 to 471 billion yuan ($73.6 billion), keeping the country on track to nab the title of the world’s largest luxury goods market by 2025. Mainland China’s share of the global luxury market was up about 21 percent last year, according to Bain, whose analysts said early this year that they anticipate such growth to continue. 

Levi’s has named the owner of a recycled denim brand in a new lawsuit, claiming that by using the “Green Tab” name, he is running afoul of its rights in the mark, which is part of a family of “famous” marks, including its red tab. According to the complaint that it filed in a California federal court on Wednesday, Levi’s claims that Defendant David Connolly is on the hook for trademark infringement, dilution, and unfair competition for manufacturing, marketing, and selling products that bear “copies” of the Arcuate pocket-stitching trademark and of its “tab mark family,” namely, its “GREEN TAB” mark and green tab device. 

In the newly-filed complaint, as first reported by Bloomberg, Levi’s claims that began to using its tab trademark (i.e., “a textile marker or other material sewn into the pocket seams or one of the regular structural seams of the garment”) on the rear pocket of its pants in 1936 to provide consumers with “sight identification” of its products. Since them, the San Francisco-based company states that it has consistently used the tab across its denim and “a variety of other clothing products,” and in a variety of colors, including green, making it so that consumers across the globe have come to recognize the tab mark as “signifying authentic, high-quality LEVI’S garments.” Even more than that, Levi’s alleges that “retailers and the public know refer to [its] iconic products as RED TAB, ORANGE TAB and SILVERTAB, among other references, depending on the color of the tab trademark.” And taken together, Levi’s contends that the various colored tabs and the “TAB-formative word marks” form the famous “Tab Mark Family.” 

At the same time, Levi’s asserts that it has used its Arcuate trademark, which refers to the stitching pattern that appears on the back pockets of “almost every pair of Levi’s brand jeans,” continuously since 1873. (Fun fact: Levi’s claims that the Arcuate mark, which consists of “a distinctive pocket stitching design,” is the “oldest known apparel trademark in the United States still in continuous use.”)

And still setting the stage, the denim-maker contends that, for many years, it “has devoted substantial resources and effort to environmental initiatives and sustainability and has marketed services and products related to these initiatives using some or all of its famous trademarks.” Among these initiatives, Levi’s claims that it has “used, within its tab mark family, a green lettered tab to denote its efforts to create jeans produced with more climate friendly processes.” 

Against this background, Levi’s claims that Connolly is “misappropriat[ing] its famous trademarks as symbols for his own jackets and denim recycling services,” including using “the GREEN TAB business name,” and in at least one mock-up, a green tab on denim jackets, which Levi’s contends “will lead the public to conclude, incorrectly, that he is or has been, or that his goods and services displaying or offered under the GREEN TAB mark are or have been, authorized, sponsored, or licensed by [Levi’s].” The likelihood of confusion is “exacerbated,” per Levi’s “by the fact that Mr. Connolly is using the GREEN TAB mark to promote and sell the same types of apparel products and sustainability services that [it] markets and sells in connection with its famous trademarks, including the tab mark family.” 

Levi's Lawsuit
Levi’s green tab (left) & a product mock-up from Connolly (right)

While it “encourages some of the environmental initiatives associated with [Connolly’s] business,” Levi’s says that it “cannot tolerate [his] use of infringing trademarks to brand and commercialize those initiatives.” As such, Levi’s sets out federal and common law claims of trademark infringement, dilution, and unfair competition, and is seeking injunctive relief and monetary damages. 

The most interesting issue in Levi’s newly-filed lawsuit is (in my opinion) is its argument about its “family” of tab trademarks, likening the various colored fabric tabs and the related word marks (which is where I scratch my head) to “a group of marks having a recognizable common characteristic, wherein the marks are composed and used in such a way that the public associates not only the individual marks, but the common characteristic of the family, with the trademark owner.” (As the Federal Circuit stated in the J & J Snack Foods Corp. v. McDonald’s Corp. case in 1991, “Simply using a series of similar marks does not of itself establish the existence of a family. There must be a recognition among the purchasing public that the common characteristic is indicative of a common origin of the goods.”)

Levi’s likely does not suffer from a lack of consumer awareness for its tabs; it states that it “has sold hundreds of millions of products, all over the world” that bear the fabric tabs and that account for “billions of dollars in sales.” In that same vein, it may not be an uphill battle for Levi’s to show that consumers connect the various colored tabs that appear on the pants pockets and that peek out from the breast pockets of its shirts (especially the red ones) with a single source. 

What is more difficult to imagine is that Levi’s has strong of an argument when it comes to the various “Tab” word marks. It is worth noting that it is unclear from the complaint if Levi’s actually uses the “Green Tab” mark in the same way as it does with “Red Tab” (Levi’s has, for instance, named its customer loyal program “Red Tab”) – or if it exclusively makes use of a fabric tab that is green. It does not point to specific use of the “Green Tab” word mark and in fact, states that it “owns registered and common law rights in word marks that reference the history and heritage of the Tab trademark, including [its] RED TAB, ORANGE TAB, and SILVERTAB marks,” with no mention of green. 

Such potential lack of use of – and rights in – the “Green Tab” word mark on its own (as distinct from the alleged family) is presumably why the denim-maker advances the “family” of marks theory, not unlike how McDonald’s did in the aforementioned case. In that case, the fast food giant argued that J & J’s use of “McPretzel” (a mark that McDonald’s was not using) infringed its family of “Mc” marks (think: McMUFFIN, McCHICKEN, McRIB, etc.), and the Federal Circuit held that McDonald’s had established a family of marks that consisted of a variety of generic food names preceded by the “Mc” prefix, even if it has not used or registered the “Mc” prefix by itself. 

Also interesting is the broader adoption of sustainability-centric marks by brands in the fashion/apparel space. The Levi’s lawsuit comes as a growing number of brands are adorning certain wares – ones that stem from sustainability-focused initiatives – with specific indicators, which, in many cases, consists of plays on one of the brand’s existing marks. As we first reported early this year, the likes of Prada, Louis Vuitton, Valentino, and Moncler are among the brands that have introduced logos that suggest elements of sustainability, such as recycling, amid a surge in consumer awareness about and demand for sustainably made and marketed products. Levi’s green tab appears to fall pretty neatly into that category. 

A rep for Connolly was not immediately available for comment in response to the Levi’s lawsuit.

The case is Levi Strauss & Co. v. David Connolly, 3:22-cv-04106 (C.D.Cal.)