In 2010, I discussed the historic filing of a lawsuit by Hollywood Jeweler Chris Aire (of Nigerian heritage), someone who has been featured on Ladybrille in the past as Man of the Month and who I have had the opportunity to work with on certain fashion related projects, against some prominent fashion luxury brands. Aire was suing Louis Vuitton, Rolex, Swatch et al. for Trademark Infringement. Aire did not get too far through the door when the defendants filed a dismissal of the suit which was granted on the lower level (trial court). Not willing to back down, Aire took the case up on appeal. A decision has now come down from The United States Court of Appeals for the Ninth Circuit saying Aire’s suit should not have been dismissed. An excerpt of the story follows below by writer Helen Christophi for Law360.com.
For the review and analysis of the initial case, basic trademark lawĀ and theĀ significance i.e. a litigant of African heritage taking the fight to the equally big names, please click here.
An excerpt of why Aire says he sued from his Ladybrille feature in 2011 follows:
“Our company developed, trademarked and made famous the Red GoldĀ® brand and after spending a lot of resources in making the brand famous, these other companies decided they wanted to exploit the brand without our consent. It is akin to me deciding to open a store on Rodeo Drive and call it Louis Vuitton, selling everything Louis Vuitton sells, I guarantee you that they would not sit idle and watch that happen. These brands frequently file similar lawsuits to protect their trademarks. Just like they all do frequently, we too must protect our trademark. The lawsuit is simply our way of policing and protecting our brand.”
-Uduak Oduok
“Law360, Los Angeles (March 19, 2013, 8:51 PM ET) — The Ninth Circuit on Tuesday reversed a lower courtās dismissal of a suit by jewelry designer Solid 21 Inc. accusing competitor Breitling USA Inc. of infringing its trademark on the term āred gold,” saying the judge had erred in ruling that the mark was generic and not protectable.
The appeals panel reversed and remanded to California federal court a ruling by U.S. District Judge Gary A. Feess dismissing Solid 21ās suit for failing to state a claim, saying the companyās submission of evidence that the mark was valid entitled it to a āstrong presumptionā that the mark isnāt generic.
āSolid 21 has alleged in its complaint and submitted supporting documentation indicating that its āred goldā mark is registered in accordance with the Lanham Act,ā the panel said in its opinion. āSolid 21ās federal registration of its trademark constitutes prima facie evidence of the markās validity.ā
The panel on Tuesday also denied the partiesā requests for judicial notice on appeal.
Solid 21 earlier in March asked the Ninth Circuit to revive its suit, arguing that Judge Feess had acted prematurely in finding that the mark involving the amber-hued alloy of gold and copper it has branded as āred goldā was generic and therefore not protectable. Breitling has used the term in the names of several of its luxury watches.
But Breitling maintained that there is no absolute rule barring courts from dismissing trademark suits at the motion to dismiss stage on the basis that something is generic and that Judge Feess properly considered Breitling’s dictionary evidence that āred goldā is used to describe a type of gold that is alloyed with copper to produce a reddish hue.
In throwing out the Breitling case, Judge Feess said courts can consider judicially noticeable facts when resolving a motion to dismiss a trademark infringement claim, and that Breitling had rebutted the presumption of trademark validity by marshaling evidence that “red gold” is a generic term.
But Solid 21 told the Ninth Circuit that a registered trademark ācannot be held generic at the motion to dismiss stage unless it is converted into a motion for summary judgment because it is a factual inquiry.ā
Breitling countered that Solid 21 couldnāt claim protection for a term that refers to the āconstituent metalā of its products.
The appeals panel on Tuesday said, however, that it is difficult to defeat the presumption of validity and that it was up to Breitling to establish āby a preponderance of evidenceā that the mark isnāt protectable.
The panel also ruled that Breitling couldnāt argue that the āred goldā mark is generic, saying that in resolving a dismissal motion, a court must consider, in addition to judicially noticeable facts, the adequacy of the pleadings, rather than the adequacy of the evidence. . .” –Helen Christophi
FASHIONENTLAW blog, authored by Ms. Uduak, was first established in 2010. It is now incorporated, in 2021, as part of the FASHIONENTLAW LAW FIRM blog. The blog is for informational purposes only and provides legal commentary and analysis on the intersection of mainstream America pop culture and the law. It also provides updates on Ms. Uduak’s speaking engagements and press activities. For inquiries on topics covered on this site, please get in touch with our firm. If you seek legal representation for your specific legal needs, please schedule a consultation.
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