Put A Sock In It!
Chris Reel
Attorney ? Commercial and Intellectual Property Litigation ? Investor and Founder Disputes
A perfect example of why brand protection is both a sword and shield that SMEs can wield selectively and strategically.
What is an all-too-often story of Big Business versus Small Competitor seems to have turned out well for the good guys this time. Here's what went down...
Setting the Stage
As so often is the case, the most innovative concepts have an origin story rooted in personal experience. POCKET SOCKS was a concept born from its founder literally getting robbed while traveling through Europe.
After designing socks with pockets on them, POCKET SOCKS was a pretty 'underground' per se brand. In other words, traction wasn't what it could have been, and most certainly wasn't what the likes of Louis Vuitton could achieve from releasing a pocket socks product of their own. Nevertheless, as a brand backed by the belief of its people, POCKET SOCKS doubled down. After a slow beginning, in 2019 things ramped up and the company started to see some strong growth.
POCKET SOCKS obtained a design patent for its unique sock design, along with multiple trademarks, including a trade dress registration for its sock design. One trademark in particular dates back to 2012.
Notably in June, 2023 POCKET SOCKS filed another trademark and made a petition to the Director of the USPTO to make the application 'special'. This application and Petition to Make Special were filed the same month POCKET SOCKS alleges LV first began promoting its 'pocket socks' product.
What is a Petition to Make Special?
A Petition to Make Special is a tool that brands can use to expedite the application review process with the USPTO. In this case it still took 12 months for the trademark to issue and register, but a petition like this was still very much warranted. This is important as you'll see in a moment.
Tip: Circumstances such as infringement on your trademark make a Petition to Make Special available.
The Lawsuit...
After surely attempting to resolve the issues without filing suit, POCKET SOCKS had no choice. And so, June 20, 2024 they filed their federal suit against LV and Mr. Williams.
Now you might be wondering: why did they take a year to sue?
While I'm speculating, I do think this is a reasonable hypothesis...
The latest trademark filing POCKET SOCKS obtained (the one mentioned above where there was a Petition to Make Special filed and granted) didn't register until June, 2024. The timing lines up to within days of the lawsuit being filed against LV and Mr. Williams. My assumption is that POCKET SOCKS waited as long as they could for this application to mature into registration to further strengthen their position against LV and Mr. Williams.
Of course it could also be that negotiations simply dragged out this long, which is entirely plausible given that LV likely wanted to see what would happen with the pending POCKET SOCKS application before agreeing to any sort of settlement.
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Either way, POCKET SOCKS was armed and at the ready to pursue their claims in federal court. And pursue them they did; alleging:
And now the crazy part.
Before LV and Mr. Williams filed an answer, and before they even had attorneys file a notice of appearance on their behalf in the lawsuit, it was voluntarily dismissed by POCKET SOCKS.
Here's My Opinion
LV thought POCKET SOCKS was bluffing.
Big businesses often do whatever they please, without regard for their SME counterparts and competitors. It's my opinion that LV tried to wait out POCKET SOCKS for them to either run out of money, time, interest, or all 3. Unfortunately for them, POCKET SOCKS was serious about defending its rights. When the suit was filed, LV started to take the settlement talks serious and came to the table proper.
Again, I don't know all of the facts and I'm not saying this is what happened. We will likely never know what went down, as the settlement agreement between the parties is confidential and the amount (likely) paid will therefore remain undisclosed.
But I know Big Business. I know how they operate. So if I'm off, I doubt I'm off by much.
The Takeaway
POCKET SOCKS did what every SME should be doing. Protect their brand.
And this may come as a shock to some, but a trademark registered with the USPTO does not do this.
Think of a trademark registration as the key that opens the door to brand protection. Without the key, you can kick the door down, pick the lock, do whatever to get it open, but it's a lot harder to do than simply putting the key in the lock and turning the handle.
SMEs that register their brand identifiers must be prepared to defend their rights or risk being pushed around (and possibly out) by competitors. If POCKET SOCKS wasn't prepared to take on LV, this would have happened and LV would have dominated the pocket socks market with their own product.
Like POCKET SOCKS, every SME has to be willing to defend the rights they're given under U.S. Intellectual Property Law (e.g. trademark law, copyright law, etc.), because there is always someone waiting in the wings to take what you've built for themselves.