Pocket Socks Inc. offers, among other things, socks with zippers. Importantly, the brand has three registered trademarks in the USA for the name POCKET SOCKS (from 2024, concerning stockings and socks; from 2013, concerning stockings; and from 2012, also concerning stockings). The last of these registrations was issued in the so-called Supplemental Register, which reflects the United States Patent and Trademark Office’s (USPTO) finding that the nature of POCKET SOCKS is “merely descriptive.”
The first two registrations were issued in the so-called Principal Register under section 2(f) of the Lanham Act, which means that, according to Pocket Socks Inc., the mark “POCKET SOCKS,” although merely descriptive, has acquired distinctiveness as a trademark through “extensive and continuous use” for at least five years before the filing of the applications.
Importantly, Louis Vuitton and Pharrell Williams introduced a product called “Pocket Socks” to their sales offering last year (2023), which are knitted socks with a decorative pocket. The price of the product (over $500) was certainly inflated by the decorative pearl on the pocket. As you can see, the general concept of the product, and importantly, the name, are the same.
In light of the above, Pocket Socks Inc. believes that the product, as offered and named, misleads consumers, leads to confusion, and creates a false impression of a connection between the two entities.
In light of the foregoing, on June 20, 2024, Pocket Socks Inc. filed a lawsuit against Louis Vuitton (suing both the French headquarters and the North American branch) and Pharrell Williams for trademark and trade dress infringement under U.S. federal law (the Lanham Act), as well as for unfair competition under the law of the State of California.
In connection with the asserted claim for trademark infringement, the company, in its complaint, referred to two prior trademarks, as the most recent registration occurred after the filing of the lawsuit. Both registrations relate to the trademark regardless of the trade dress, although the reasoning contains references to the fact that the defendants are using POCKET SOCKS “in the same font and size as in Trademark Registration No. 4,414,045.” This is significant because the most recent trademark explicitly referred to socks, and this registration concerned the Supplemental Register, rather than a typical trademark.
Interestingly, the case against Pharrell seems problematic from the outset. There is no evidence that he sells the disputed products separately and independently. Consequently, he has not n accused of any specific conduct that could be related to contributing to the infringement of the plaintiff’s rights, nor is there even a claim that he contributed to the infringement of the plaintiff’s rights through Williams. Ultimately, the case will hinge on whether there is a likelihood of consumers being misled as to the origin of the disputed goods, i.e., Louis Vuitton socks for $500 versus Pocket Socks Inc. socks for $20 (which, despite their similarity, differ not only in price but also, for example, in the presence of a pearl). Furthermore, the issue of whether Louis Vuitton’s use of “pocket socks” constitutes “fair use” for descriptive purposes will need to be examined. It should be emphasized that the registration of the POCKET SOCKS trademark in the United States is beyond dispute, so Louis Vuitton will not be able to challenge the fact that the disputed mark has acquired distinctiveness. Currently, there is no statement from the defendants in the case, so we will have to wait for a resolution. As can be seen, the court hearing the case will have to analyze the matter on many levels, and it cannot be assumed that the parties will reach a settlement.
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