1

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. 

____________________________________ 
2

FOR PLAINTIFF-COUNTERDEFENDANT-APPELLANT: RONALD D. COLEMAN (with Joel G. 

MacMull on the brief), Archer & 

Greiner, P.C., New York, NY.

 

FOR DEFENDANTS-COUNTERCLAIMANTS-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 
3

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, 
4

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. 
5

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