Dispute Over Trademark Red Gold
On Friday, March 24th, a jewelry company was granted a second chance to defend its trademark against luxury giant, Louis Vuitton Moet Hennessy, and its Hublot brand specifically. Solid 21 seeks to enforce its registered trademark, while Hublot argues the term “red gold” is a generic description of the metal created by combining gold and copper – creating a reddish gold color.[1]
Solid 21 Inc. filed for registration of the trademark RED GOLD in 2002, and received registration in late 2003.[2] RED GOLD is claimed as a Goods and Service mark, specifically “[f]ine jewelry made of a special alloying of gold with a distinct color made into fine jewelry, namely, watches, necklaces, bracelets, rings, anklets, cuff links, ornamental hair pins, belt buckles of precious metal, tie clips and pegs, and earrings.”[3] The USPTO declared the mark incontestable in 2009.Solid 21, 109 F. Supp. 3d at 1317.[/mfn]
Solid 21 Inc. filed fourteen actions in attempt to enforce this trademark against various defendants that are claimed to have violated Solid 21’s trademark rights.[4] Hublot (owned by Louis Vuitton Moet Hennessy – LVMH) “filed counterclaims, seeking: (1) declaratory judgment as to the invalidity of the trademark; and (2) cancellation of Solid 21’s trademark registration.”[5]
The lower court decision held that Solid 21 Inc.’s RED GOLD trademark was in fact generic.[6] The court concluded that there was “overwhelming evidence” that the “red gold” term was generic when the plaintiff began using the term in commerce and that there were no triable issues of fact.[7] “Viewing all relevant evidence in the light most favorable to Solid 21, it is clear that ‘red gold’ ‘relates to the type of product rather than its source and consequently falls on the ‘what-are-you’ side of the genericness test.’”[8]
The Ninth Circuit Court of Appeals reversed finding there are sufficient triable issues at hand.[9] The panel of judges concluded that the district court erred by excluding a portion of an expert linguist’s declaration and by excluding the plaintiff’s consumer declarations.[10] Solid 21 Inc. will have an opportunity to demonstrate whether the term RED GOLD is recognized by consumers as an indication of source, or whether the term RED GOLD is merely the term used to describe the product in its most basic form. If the former is answered in the affirmative the term is functioning as a trademark; but, if answered affirmatively in the latter, the term is a generic.
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