   16-3488-cv
   LVL XIII Brands, Inc. v. Louis Vuitton Malletier SA

                     UNITED STATES COURT OF APPEALS
                         FOR THE SECOND CIRCUIT

                             SUMMARY ORDER

RULINGS BY SUMMARY ORDER DO NOT HAVE PRECEDENTIAL E
FFECT. CITATION TO A SUMMARY ORDER FILED ON OR AFTER JANUARY 1, 2007,
IS PERMITTED AND IS GOVERNED BY FEDERAL RULE OF APPELLATE PROCEDURE 32.1
AND THIS COURT=S LOCAL RULE 32.1.1. WHEN CITING A SUMMARY ORDER IN A
DOCUMENT FILED WITH THIS COURT, A PARTY MUST CITE EITHER THE FEDERAL
APPENDIX OR AN ELECTRONIC DATABASE (WITH THE NOTATION ASUMMARY ORDER@).
A PARTY CITING TO A SUMMARY ORDER MUST SERVE A COPY OF IT ON ANY PARTY
NOT REPRESENTED BY COUNSEL.

        At a stated term of the United States Court of Appeals for
   the Second Circuit, held at the Thurgood Marshall United States
   Courthouse, 40 Foley Square, in the City of New York, on the
   20th day of December, two thousand seventeen.

   PRESENT:
            DENNIS JACOBS,
            REENA RAGGI,
            CHRISTOPHER F. DRONEY,
                 Circuit Judges.
   _____________________________________

   LVL XIII BRANDS, INC., a New York
   Corporation,
            Plaintiff-Counter-Defendant-Appellant,

              -v.-                                    16-3488-cv

   LOUIS VUITTON MALLETIER SA, LOUIS
   VUITTON NORTH AMERICA, INC.,
            Defendants-Counter-Claimants-Appellees,

   LVMH MOET HENNESSY LOUIS VUITTON SA,
            Defendant.

   ____________________________________


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FOR PLAINTIFF-COUNTER-
DEFENDANT-APPELLANT:         RONALD D. COLEMAN (with Joel G.
                             MacMull on the brief), Archer &
                             Greiner, P.C., New York, NY.

FOR DEFENDANTS-COUNTER-
CLAIMANTS-APPELLEES:         ROBERT E. SHAPIRO (with Wendi E.
                             Sloane and Hannah Y.M. Jurowicz on
                             the brief), Barack Ferrazzano
                             Kirschbaum & Nagelberg LLP,
                             Chicago, IL; Jonathan D. Lupkin,
                             Lupkin & Associates PLLC, New
                             York, NY.

     Appeal from a judgment of the United States District Court
for the Southern District of New York (Engelmayer, J.).

     UPON DUE CONSIDERATION, IT IS HEREBY ORDERED, ADJUDGED, AND
DECREED that the judgment of the district court is AFFIRMED.

     LVL XIII Brands, Inc. (“LVL”) appeals from an order of the
United States District Court for the Southern District of New
York (Engelmayer, J.) granting summary judgment for Louis
Vuitton Malletier SA and Louis Vuitton North America, Inc.
(collectively, “Louis Vuitton”) on LVL’s claims of trademark
infringement, unfair competition, and false designation of
origin under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
LVL also renews its challenge to the court’s admission of survey
evidence proffered by Louis Vuitton. We review the court’s
grant of summary judgment de novo, see Cross Commerce Media,
Inc. v. Collective, Inc., 841 F.3d 155, 162 (2d Cir. 2016), and
its evidentiary ruling for abuse of discretion, see United
States v. Delva, 858 F.3d 135, 156 (2d Cir. 2017). We assume
the parties’ familiarity with the underlying facts, the
procedural history, and the issues presented for review.

     1. LVL challenges the district court’s grant of summary
judgment for Louis Vuitton on the Lanham Act claims. In order
to prevail on those claims, LVL would need to establish that
(1) it has a “mark [that] ‘merits protection’” and (2) “the
allegedly infringing use of the mark (or a similar mark) is
‘likely to cause consumer confusion.’” Christian Louboutin

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S.A. v. Yves Saint Laurent Am. Holdings, Inc., 696 F.3d 206,
224 (2d Cir. 2012) (quoting Louis Vuitton Malletier v. Dooney
& Bourke, Inc., 454 F.3d 108, 115 (2d Cir. 2006)). The district
court determined on summary judgment that LVL can make neither
of these two required showings.

     As to the first showing, a mark merits protection if it has
either one of two types of “distinctiveness”: “inherent[]” or
“acquired.” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763,
769 (1992). A mark has inherent distinctiveness if its
“intrinsic nature serves to identify a particular source.” Id.
at 768. A mark that lacks inherent distinctiveness can acquire
distinctiveness if it develops a “secondary meaning” in the
consumer market. Id. at 769.      A mark has developed such a
secondary meaning if “in the minds of [consumers], the primary
significance of [the mark]. . . is to identify the source of
the product rather than the product itself.” Id. at 766 n.4
(internal quotation marks omitted). “Where the mark is a word,
symbol or even product packaging, [a] plaintiff may prove
distinctiveness by showing either” inherent distinctiveness or
a secondary meaning. Yurman Design, Inc. v. PAJ, Inc., 262 F.3d
101, 115 (2d Cir. 2001). But if the mark is a “product design”
feature, a plaintiff “must” establish a secondary meaning. Id.

     The mark at issue here (a rectangular metal plate affixed
to the toe of LVL’s sneakers) is a product design feature.
LVL’s arguments to the contrary lack support in law or fact.
Insofar as LVL contends that its mark is an inherently
distinctive “symbol” or “logo” akin to the “Polo Player” used
on Ralph Lauren’s clothing line, its argument fails. When
viewed as a logo--meaning independent of its placement on the
shoe--the toe plate is merely a rectangle, the sort of
“commonplace” shape that, absent more, is “not inherently
distinctive.” Star Indus., Inc. v. Bacardi & Co., 412 F.3d 373,
382 (2d Cir. 2005). Even if we consider the plate’s metallic
hue evidence of stylization, the record shows that such a
feature is not uncommon in the relevant high-end shoe market.
See id. Therefore, LVL’s mark is not an inherently distinctive
symbol. It is properly classified as a product design feature,



                               3
and LVL must prove that it developed a secondary meaning.1

     We have identified six factors that bear on the
determination of whether a mark has developed a secondary
meaning:

    (1) advertising expenditures, (2) consumer studies
    linking the mark to a source, (3) unsolicited media
    coverage of the product, (4) sales success, (5) attempts
    to plagiarize the mark, and[] (6) [the] length and
    exclusivity of the mark’s use.

Christian Louboutin, 696 F.3d at 226. An independent review
of the record, guided by the factors articulated in Christian
Louboutin, confirms that LVL cannot show that its mark developed
a secondary meaning, for substantially the reasons stated in
the district court’s thorough and careful September 13, 2016
Opinion and Order. See LVL XIII Brands, Inc. v. Louis Vuitton
Malletier S.A., 209 F. Supp. 3d 612, 654-55 (S.D.N.Y. 2016).

     LVL’s Lanham Act claims therefore fail as a matter of law,
as they concern a mark that does not merit protection under the
statute. Because the district court correctly granted summary
judgment for Louis Vuitton on that basis, we have no occasion
to consider whether LVL can establish a likelihood that
consumers would be “confused by the similarity of [LVL’s and
Louis Vuitton’s] marks.” Two Pesos, 505 U.S. at 780.


    1 Notably, the U.S. Patent and Trademark Office (“PTO”)
deemed LVL’s mark a product design feature. See Genesee
Brewing Co. v. Stroh Brewing Co., 124 F.3d 137, 148 n.11 (2d
Cir. 1997) (“[W]e [] accord weight to the [] conclusions of the
[PTO].” (internal quotation marks omitted)). And LVL itself
characterized the mark in that manner, not only in its
application for trademark protection from the PTO, but also in
its answer to Louis Vuitton’s counterclaims. See Gibbs ex rel.
Gibbs v. CIGNA Corp., 440 F.3d 571, 578 (2d Cir. 2006) (“Facts
admitted in an answer . . . are judicial admissions that bind
[the admitting party] throughout th[e] litigation.”). LVL
therefore fails to show that the classification of its mark is
a genuine issue for trial.

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     2. LVL renews its challenge to the district court’s
admission of Louis Vuitton’s survey evidence on secondary
meaning. This challenge fails easily.

     The court did not abuse its discretion in concluding that
LVL’s arguments regarding the survey’s methodology went to the
weight of the evidence rather than its admissibility. See
Schering Corp. v. Pfizer Inc., 189 F.3d 218, 228 (2d Cir. 1999),
as amended on reh'g (Sept. 29, 1999). Nor did the court abuse
its discretion in concluding that, although Louis Vuitton
failed to comply with the procedural requirements of Fed. R.
Civ. P. 26, LVL was not sufficiently prejudiced by that
noncompliance to warrant preclusion of the evidence under Fed.
R. Civ. P. 37(c)(1). See Patterson v. Balsamico, 440 F.3d 104,
117 (2d Cir. 2006).

     For the foregoing reasons, we AFFIRM the judgment of the
district court.

                        FOR THE COURT:
                        Catherine O’Hagan Wolfe, Clerk of Court




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