Sellers of goods often will add a design element to their product and claim no competitor can copy its design, asserting it will violate trademark rights because the design element has become associated with the seller in the minds of consumers. In other words, the design element functions as a trademark. Take, for example, the solid red sole of the Christian Louboutin shoe.

Recently, LVL XIII, a seller of popular sneakers featuring a rectangular metal plate design on the toe, sued Louis Vuitton for using a similar metal toe plate design on its shoes.

Holding the metal toe plate to be somewhat commonplace as a logo, the court decided it was not inherently distinctive – meaning it was not capable of signifying any one brand in the minds of consumers as the source of the shoe. Had it been inherently distinctive, it would have served as a mark. As a merely non-inherently distinctive feature of the of the product design, LVL XIII was required to prove the metal toe plate design had developed secondary meaning.

The Second Circuit adopted a six factor test to determine whether secondary meaning exists: 1. Advertising expenditures; 2. consumer studies linking the mark to a source; 3. unsolicited media coverage of the product; 4. sales success; 5. other attempts to copy the mark; and 6. length and exclusivity of the mark’s use.

1. Advertising expenditures: LVL XIII did not pay for any television, newspaper or magazine advertisements and it spent only $82,000 in 2013 for marketing and promotion. Even more damaging, the court found that the advertising that was conducted did not identify the metal toe plate as an indicator of source.
2. Consumer studies linking the toe plate to LVL XIII: LVL XIII did not conduct a secondary meaning survey. However, the defendant, Louis Vuitton did. Louis Vuitton’s expert conducted a survey that showed at most 3% of respondents associated the metal toe plate with a single source but did not identify LVL XIII as the single source.
3. Unsolicited media coverage: Again, LVL XIII failed to supply sufficient evidence of unsolicited media coverage. With regard to what media coverage there was, the coverage did not refer to the metal toe plate as an indicator of source.
4. Sales Success: The court found that LVL XIII must show that the metal toe plate acquired secondary meaning before its competitor’s sneakers entered the market. Only half of the 1,000 pairs of LVL XIII sneakers produced were sold. And of that half sold, $141,241 in revenue was generated. The court found that this level of sales was not sufficient to establish secondary meaning.
5. Attempts to copy: Aside from Louis Vuitton’s alleged infringement, LVL XIII conceded that it was not aware of any other attempts to plagiarize the metal toe plate design.
6. Length and exclusivity of the mark’s use: LVL XIII used the toe plate on its sneakers no more than eight months before Louis Vuitton’s use, and the court noted that LV and many other luxury shoe brands used toe plates or similar ornamentation on sneakers as early as 2010.

The so–called mark’s owner was unable to prove the mark was associated with it in the minds of consumers and protectable under the Lanham Act. This case highlights the difficulty of protecting design elements – that is being able to exclusively use, to the exclusion of competitor, a design element.