Louis Vuitton is a staunch protector of unauthorized uses of its trademarks, including its well-known ‘Toile Monogram’ pattern. Trademark infringement is the unauthorized use of another’s mark in a way that creates a likelihood of confusion as to source or sponsorship. Louis Vuitton’s success, however, has been mixed. This suggests that the decision whether or not — and indeed how — to engage in a trademark battle should be carefully considered.
Earlier this year, Louis Vuitton’s zeal backfired when it sent a cease and desist letter to the dean of the University of Pennsylvania Law School alleging “a serious willful infringement” of the LV Trademarks and ‘Toile Monogram’ pattern. The alleged infringement, a poster for an Annual Symposium on ‘IP Issues on Fashion Law’ depicted a satirical take on the Louis Vuitton ‘Toile Monogram’ pattern, replacing the letters ‘LV’ with ‘TM’.
The absurdity of the cease and desist letter, and its fundamental lack of substantiated arguments, was starkly highlighted by the Associate General Counsel for the law school. And the resulting publicity has not been kind to Louis Vuitton.
More recently, however, the US International Trade Commission (the “ITC”) ruled in favor of Louis Vuitton in a counterfeiting lawsuit after 15 months of investigation. In December 2010, Louis Vuitton filed its complaint with the ITC against several companies alleging that various Chinese counterfeiters and some US retailers were infringing the ‘Toile Monogram’ pattern. The case is centered around an elaborate enterprise allegedly run by Jianyong Zheng and Alice Bei Wang, who owned and managed several companies, says Stylelite, and two other companies, The Inspired Bagger in Dallas, Texas and House of Bags in Los Angeles, which allegedly bought fake Louis Vuitton bags from Zheng and Wang.
Protecting your brand is key, and failure to take enforcement action may render trademark rights meaningless. However, brand owners must choose their battles wisely in how they seek to protect their brands, whether formally or informally, publicly or privately. In the ITC proceeding, the defendants appeared to be blatant counterfeiters. In the law school instance, the use appeared to be for purposes of commentary, and it was unlikely that anyone believed the University of Pennsylvania’s conference had an actual affiliation with Louis Vuitton.