|This Red and Gold Cat Does |
Not Like to be Called "Generic"
Tuesday, 30 September 2014
Compatriot, fellow member of the New York Bar, and, last but not least, former Kat, Laetitia Lagarde kindly pointed out to me this very interesting case. Thank you very much Laetitia, as, thanks to you, I keep building my case to be exclusively known as the “Bling Kat”!
Indeed, we are back in the glamorous world of jewelry and trade marks. In this case, Plaintiff Solid 21 owns the registered trade mark RED GOLD® for, inter alia, fine jewelry and watches “made out of a special alloying of gold with a distinct color.” Plaintiff has used this trade mark in commerce in connection with the design, manufacture, marketing and advertising of fine jewelry since 1996. The RED GOLD® trade mark is incontestable since August 2009.
Plaintiff first filed suit against Louis Vuitton and several of its subsidiaries in 2011, claiming that they knowingly, or alternatively, negligently, used “red gold” in their marketing, advertising and sales of their product line of fine jewelry.
Plaintiff filed an amended complaint on January 13 of this year, alleging trademark Infringement, unfair competition and false description in violation of both the Lanham Act and California law. Defendants moved for summary judgment, but Judge Dolly Gee from the Central District of California denied it on September 29. The case is Solid 21 Inc. v. Hublot of America, et al., cv 11-00468.
Defendants argued that “red gold” is generic and thus cannot be a trade mark. The Ninth Circuit defines generic terms as “names which describe the genus of goods being sold.” Some trade marks become generic when the public no longer recognize them as an origin of goods, such as “aspirin,” which used to be a Bayer Co.’s trade mark, while others should not have been registered as a trade mark in the first place, as Defendants claim in our case. Plaintiff argued that the genus of the goods in this case was “watches” but Defendants argued it was “jewelry” and the Court agreed with Defendants.
Defendants bear the burden of proving that a registered trade mark is generic, and the Ninth Circuit applies the “who-are-you/what-are-you” test to find out whether a particular mark is generic or not. Under that test, a mark answers the consumers’ questions “Who are you” “Where do you come from?” “Who vouches for you?” whereas the generic name of a product answers the question “What are you?”
Judge Gee noted in a foot note that in cases such as this one “where there is undisputed evidence of generic use of the term for decades before it was trademarked and no evidence of a non-generic meaning before the trademark holder entered the market,” the date when the trade mark holder entered the market is the date which must be considered to determine whether the mark is indeed generic. Therefore, the Court looked for evidence of use for “red gold” for jewelry in dictionaries, media, and industry.
The Ninth Circuit gives “significant but not controlling weight “to dictionaries when analyzing genericness of a trade mark and both parties argued over the admission of several particular British and American dictionaries as evidence that “red gold” is generic or not, as some provided a definition for “red gold” while others did not. The Court concluded that such evidence did not weigh in favor of Defendants.
Defendants also provided numerous examples of the use of “red gold“ by other jewelry companies, jewelry trade journalists, and jewelry trade associations, to describe reddish-colored gold, even as early as the late 19th Century. They also argued that at least ten patents which have been filed in the U.S from 1919 to 2003 use the term “red gold” to refer to a type of gold used in jewelry or watches.
A Plaintiff’s industry expert testified that she had never bought or sold a watch or a piece of jewelry described by the customer as “red gold” and the Court concluded that this testimony gave some support “albeit weak” to Plaintiff’s argument that consumers do not use “red gold” as a generic term.
Judge Gee concluded that there is a triable issue of fact regarding genericness based on the testimony of Plaintiffs’ experts and evidence of media usage of the term red gold in a non-generic manner, even though such evidence amounts “to slightly more than a “scintilla.””
The case will now likely go to trial.