14
Sep/16

SDNY: LVL XIII v LV re Metal toe plates


107 page decision by Engelmeyer, J.

Plaintiff targets its LVL XIII (Level 13) sneaker at the luxury ($500) market. The sneaker has a metal toe plate with LVL XIII engraved on it:

-LXL-VIII

Plaintiff’s sneaker got some traction: a few celebrities were seen in a few pairs. 8 months after the introduction, LV comes out with the OTR (On The Road) luxury sneaker:

LV OTR sneaker

PLaintiff therefore has to establish secondary meaning in the toe plate as existing by the 8 month point. Very lengthy discussion as to how to not establish secondary meaning. Not high $$ sales, not much unsolicited media coverage, some evidence that existed after the 8 month point (and therefore irrelevant to the analysis). Plaintiff forewent a conventional secondary meaning survey in favor of a law professor whose testimony got tossed under Daubert.

Plaintiff argued that LV’s alleged copying was evidence of secondary meaning. McCarthy’s has one of the more succinct discussions as to why this argument is not always logically sound (defendant might have adopted the element precisely because it thought the element didn’t indicate source). Here, plaintiff couldn’t prove that LV had prior knowledge or that it copied plaintiff. LV’s designer testified that he was inspired by this photo of James Dean wearing Converse Jack Purcells:

james dean wearing jack purcells

LV’s designer replaced the toe ‘smile’ of the Jack Purcells with a metal toe clip because, apparently, metal detailing is in. Also, legal told him to stay away from the Purcells.

So Plaintiff fails in establishing that it has secondary meaning in the toe cap, so that is the end of the case but the court does a full Polaroid analysis any way. Weak mark, evidence of third-party use of two plates, the toe plates don’t look that much like each other (LVL XII’s toe plate has a LVL XII on it) no evidence of actual confusion, no bad faith, people who pay $500 for sneakers are careful as to brand – LV wins ‘lopsidely.’

LV brings counterclaim that plaintiff’s LVL XIII mark is confusingly similar to the LV mark. Dismissed.

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