Louis Vuitton to Chewy Vuiton: famous
marks and the brands they stand for

When the luxury luggage and accessories company Louis Vuitton learned about high-end dog accessories being marketed as Chewy Vuiton products, they sued under the Federal Trademark Dilution Act of 1995, enacted in 1996.

The 1995 FTDA both strengthened and narrowed trademark protection in the United States so that companies with original marks – words or symbols, colors or trade dress could ensure the integrity of their brands against infringement and dilution.

Trademark infringement is use of a mark that causes or is likely to cause confusion among consumers regarding the origin of the goods and services offered for sale. Dilution creates an association with a senior mark, lessening its distinctiveness.

According to Bobby Ghajar, a lawyer with Howrey LLP, who served as a panelist discussing “What Everyone Should Know about Famous Marks and the Brands that Would Dilute Them” at the recent ABA Annual Meeting, “Dilution is a death by a thousand cuts.”

Louis Vuitton Malletier, S.A., claimed dilution against Haute Diggity Dog LLC, manufacturerof Chewy Vuiton products.

Under the FTDA of 1995, the law sought to create uniform protection for distinctive and famous marks. It also acknowledged that a mark or name in one geographic area or industry might not be famous in another. To prove dilution under the FTDA, companies need to show actual tarnishment or loss of sales.

In the case of an adult store called Adults R Us, a judge ruled dilution by tarnishment in favor of Toys R Us. In the case of another adult products store named Victor's Secret, later Victor's Little Secret, the court held that the name did not tarnish or dilute the name of Victoria's Secret as the women's lingerie chain had suffered no adverse financial impacts.

Then there was a 2006 suit by Milbank Tweed, a New York law firm dating back to 1866, that began marketing itself as Milbank. A real estate company in Los Angeles, MRE, renamed itself in 2002 as Milbank Real Estate. The law firm Milbank sued for dilution. However, Milbank Real Estate received a summary judgment in its favor because Milbank Tweed had failed to show that Milbank was a famous mark in 2002 when the real estate company adopted the same name. The court additionally ruled that both companies occupy different market segments.

In the Louis Vuitton v. Chewy Vuiton case, the court ruled in November 2006 that the Chewy Vuiton products are clearly a parody and are protected under the First Amendment.

Katherine Basile, panel moderator and also a lawyer with Howrey, LLP, said that Louis Vuitton is appealing.

Two other panel members, James R. Cady, an IP lawyer with Howrey, LLP and formerly in-house trademark counsel for Red Bull GmbH in Austria, and Tuan Le, senior trademark counsel with Intel Corporation, offered advice on protecting trademarks.

Le said, “First find out how to make the mark famous and then protect it.” Le told the audience about how Intel worked to create a demand for its processors after the company was ordered to share its technology with competitors.

Cady described the process of establishing the Red Bull brand internationally and the vigilance required to keep companies imitating their packaging off the shelves.

More information on trademarks, infringement and dilution is available at the ABA Section of Administrative Law and Regulatory Practice www.abanet.org/adminlaw/

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