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Handbag maker Louis Vuitton has been rebuffed in an effort to claim trademark violation by a competitor using a similar “look” that included its own intertwined initials. Southern District of New York Judge Shira A. Scheindlin, said a bag made by the competitor, Dooney & Bourke, resembled Vuitton’s but not to the level of trademark infringement. And the obvious difference between “LV” and “DB” made consumer confusion unlikely, she wrote in Louis Vuitton Malletier v. Dooney & Bourke, 04 Civ. 2990. The case flowed from the introduction in October 2002 of Vuitton’s Monogram Multicolore bags. The company put its “LV” and geometric shapes in bright colors on white or black handbags. The move spawned copycats, and the French maker of high-end goods sued about 20 companies for trademark infringement, Dooney & Bourke among them. The judge said she received 20,000 pages of submissions, but that “no amount of expert opinion, legal analysis, or demonstrative evidence can overcome the clarity that comes from direct observation.” Dooney & Bourke’s use of a multicolored “DB” monogram on purses with white or black backgrounds obviously did not use the “LV” logo, she concluded. This simple difference tipped the scales in Dooney & Bourke’s favor. With that decided, the only question left was whether Louis Vuitton could trademark a multicolor monogram against a white or black background. Judge Scheindlin said no. “To hold otherwise would not only contravene settled law,” she said, “it would grant Louis Vuitton monopoly rights over a ‘look.’” Vuitton registered its Toile Monogram — the “LV” — in 1896. Normally, the monogram is printed in gold on a dark background, so use of the multicolors was a departure. In a short time, Vuitton sold 70,000 of the bags for $360 to $3,950 apiece. They brought in more than $40 million. Dooney & Bourke introduced its interlocking “DB” monogram in 2001 and started printing it in bright colors after the new Vuitton line came out. Dooney & Bourke’s bags were a hit, totalling half of its sales. Dooney & Bourke followed Louis Vuitton’s design, and “likely imitated certain aspects” of it, the court acknowledged. Vuitton filed an action seeking a preliminary injunction for trademark infringement. Scheindlin applied the Polaroid test. In Polaroid Corp. v. Polarad Electronics Corp., the 2nd U.S. Circuit Court of Appeals in 1961 established a multi-pronged test to determine a likelihood of confusion in a trademark action. Vuitton won on the first factor of the test. Its mark was strong and well known. It also showed that its bags competed with Dooney & Bourke’s. Examining the similarity of the marks, another test, hurt Vuitton’s case, however. “[I]t could not be more obvious that Louis Vuitton uses the initials ‘LV,’ while Dooney & Bourke uses its trademarked ‘DB’ logo,” Scheindlin wrote. “Thus a consumer seeing these trademarks printed on these bags, either up close or at a distance, is not likely to be confused.” Vuitton failed to prove significant actual confusion. Scheindlin said contradictory expert testimony and consumer surveys were mostly unconvincing. Nor did Vuitton show that Dooney & Bourke had acted in bad faith because it did not attempt to deceive consumers, she ruled. Theodore Max, Kevin Ainsworth and Charles LeGrand of Mintz Levin Cohn Ferris Glovsky and Popeo represented Louis Vuitton. Douglas Broadwater, Roger Brooks and David Greenwald of Cravath, Swaine & Moore represented Dooney & Bourke.

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