Rothwell Figg Client Valentino S.p.A. Obtains U.S. Trademark Registrations for the Iconic Rockstud Shoe Designs
Rothwell Figg Client Valentino S.p.A. Obtains U.S. Trademark Registrations for the Iconic Rockstud Shoe DesignsJanuary 15, 2021
The U.S. Patent and Trademark Office (USPTO) recently granted trademark registrations for three shoe designs for the iconic Rockstud line of shoes in a victory for owner and Rothwell Figg client Valentino S.p.A.
Valentino S.p.A.’s Rockstud shoes feature metallic, three-dimensional, pyramid-shaped studs that are unique to Valentino S.p.A. The shoes are well-known, and instantly recognized by consumers as a symbol of Valentino S.p.A.’s high-quality products, reputation, and goodwill. Since introduction, Valentino S.p.A.’s Rockstud shoes have been in consistent demand in the United States and around the world and have been photographed on countless celebrities while earning extensive critical review and acclaim.
On October 29, 2019, Valentino S.p.A. filed trademark registrations for the following three designs in its Rockstud line of shoes in International Class 25:
On February, 7, 2020, the USPTO issued an Office Action in each application refusing registration on the basis that the designs did not function as trademarks. Under current U.S. law, product designs may not function as trademarks unless it can be shown that the designs have acquired distinctiveness, meaning that the public recognizes the design as originating with the source of the design. In other words, the USPTO’s initial position was that the designs did not identify a single brand.
Rothwell Figg filed responses to the Office Actions on August 5, 2020, providing voluminous evidence of the tremendous success of the Rockstud shoes as well as the public renown in order to show that Rockstud shoes are instantly recognized by the public as Valentino S.p.A. shoes. Among the evidence submitted were documents showing the tremendous sales in the U.S. for Rockstud shoes since introduction in 2010. The evidence also showed that Rockstud shoes have been featured by numerous media outlets and praised by countless celebrities appearing in magazines and social media. For example, fashion magazine Redbook recently wrote “Valentino [S.p.A.] Rockstuds are another shoe trend that took off in the 2010s. The heels are strappy and lined with small pyramid-shaped studs that are instantly recognizable.” Rothwell Figg also provided legal arguments that the Rockstud designs have acquired distinctiveness as legally defined, and therefore function as trademarks.
Rothwell Figg’s responses were successful: the refusal for each application was withdrawn and all were approved for publication, resulting in registrations issuing for each design.
As a result of these new registrations, Valentino S.p.A. has valuable new tools at its disposal to protect its prized designs and protect the public from unlawful copies in the market.