Valentino filed three trademark applications (US App. Ser. Nos. 88/672,186; 88/672/019 and 88/672225) directed to different aspects of their Rockstud® shoes. Specifically, Valentino claimed that the pyramid shaped metallic studs, as applied to the t-strap and collar of a shoe, had acquired distinctiveness over the previous 5 years of commercial success. The USPTO disagreed, rejecting the application(s) for failure to function as a mark-non-distinctive design, merely ornamental and further asserting that Valentino’s proffered proof in support of acquired distinctiveness was insufficient. Valentino’s response, filed August 5 and almost 300 pages long, included evidence of Valentino’s long term use of the mark, store presence, advertising expenditures, press and “extreme profitability.” Valentino also cited the 2nd Circuit’s decision in Christian Louboutin SA v Yves Saint Laurent Am. Holdings, 696 F.3d 206 (2d Cir. 2012), in which the Court held that the purchasing public associated red soles with Louboutin.
If Louboutin’s had managed to acquire distinctiveness, so argued Valentino, have my Rockstuds®!