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DEBEVOISE

50

PLIMPTON

LLP

919 Third Avenue New York, NY 10022 Tel 2129096000 www.debevoise.com David H. Bernstein Partner Tel 212 909 6696 Fax 212521 7696 dhbernstein@debevoise.com

January 30, 2013

BY ECF AND HAND DELIVERY
Ms. Catherine O'Hagan Wolfe Clerk of Court U.S. Court of Appeals for the Second Circuit Thurgood Marshall U.S. Courthouse 40 Foley Square New York, NY 10007

Re:

Christian Louboutin S.A. v. Yves Saint Laurent Am., Inc., No. 11-3303-cv (2d Cir.), No. ll-cv-2381 (VM) (SDNY); U.S. Trademark Registration No. 3,361,597

Dear Ms. O'Hagan Wolfe: We represent Yves Saint Laurent America, Inc., Yves Saint Laurent America Holding, Inc. and Yves Saint Laurent S.A.S. (collectively, "YSL") in the abovereferenced matter. We write in connection with the letter that Harley Lewin, Esq., counsel for Plaintiffs, sent to you on January 25,2013. We were advised by Court personnel in a telephone conference on January 29, 2013 that the Court is likely to set a schedule for YSL to submit a substantive response to the arguments raised in Mr. Lewin's January 25 letter. It was not clear to us or the clerk with whom we spoke, though, whether our submission should be in the form of a responsive letter at this time, whether the Court instead plans to order briefing on this issue, and whether the Court intends thereafter to rule on the submissions or to entertain oral argument. Whatever form the Court prefers for our submission, we do want to alert the Court that YSL intends to oppose the relief sought by Louboutin because, if granted, it would have serious anti-competitive effects not only for YSL, but also for all other legitimate competitors who design and sell non-infringing women's footwear with red outsoles.

New York • Washington, D.C • London • Paris • Frankfun • Moscow • Hong Kong • Shanghai

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Ms. O'Hagan Wolfe

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We look forward to hearing from the Court with respect to the timing for and format ofYSL's response. Respectfully submitted,

David H. Bernstein

cc:

Thomas L. Casagrande, Esq. Harley Lewin, Esq. Susan Upton Douglass, Esq.

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By Electronic and Hand Delivery January 25, 2013 Catherine O’Hagan Wolfe Clerk of Court U.S. Court of Appeals for the Second Circuit Thurgood Marshall U.S. Courthouse 40 Foley Square New York, NY 10007
Harley I. Lewin
Partner T. 212.609.6818 F. 212.602.0122 HLewin@mccarter.com

Re: Christian Louboutin S.A. v. Yves Saint Laurent America, Inc. No. 11-3303 Dear Ms. Wolfe: On behalf of appellants Christian Louboutin S.A. and Christian Louboutin (collectively, “Louboutin”), we write to request that the Court modify the September 27, 2012 mandate issued to the U.S. Patent and Trademark Office (“USPTO”) [D.I. 132] (“Mandate”). As presently written, the Mandate instructs the Director of the USPTO to “make appropriate entry upon the Office’s records to reflect that U.S. Trademark Registration No. 3,361,597 . . . is limited to a red lacquered outsole on footwear that contrasts with the color of the adjoining (‘upper’) portion of the shoe.” Mandate at 2 (emphasis added). While the language of the Court’s September 5, 2012 Opinion and Order [D.I. 121] (“Opinion”) makes clear on page 28 (in footnote 25), that the Court has defined an “upper” as “the visible portions of the shoe other than the outsole,” the Mandate itself uses only the defined term “upper” and adds the word “adjoining.” The USPTO believes it is compelled to adopt the language of the Mandate verbatim, without the definitions set forth earlier in the Opinion. However, this language creates greater ambiguity rather than clarity and is directly contrary to the practice of the USPTO, which is to reject descriptions that do not clearly and accurately state what the mark comprises and/or create misleading impressions. See Trademark Manual of Examining Procedure (“TMEP”) § 802.02.1

McCarter & English, LLP 245 Park Avenue 27th Floor New York, NY 10167-0001 T. 212.609.6800 F. 212.609.6921 www.mccarter.com

BOSTON

HARTFORD

NEW YORK

NEWARK

PHILADELPHIA

STAMFORD

WILMINGTON

The USPTO’s call for clarity is found throughout the TMEP. For example, “[t]echnical or esoteric language and lengthy descriptions of characteristics or uses are not appropriate.” TMEP § 1402.01. The “language used to describe goods and/or services [in a trademark application] should be understandable to the average person and should not require an indepth knowledge of the relevant field.” Id. Moreover, the USPTO regularly rejects the use of devices such as parentheses and quotations in trademark applications because the use of such devices can lead to confusion. See TMEP § 1402.02. Although section 1402 discusses the use of parentheses and quotations, the discussion is apposite here because

1

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Catherine O’Hagan Wolfe January 25, 2013 Page 2

The disagreement between counsel and the USPTO turns on the adoption by the USPTO (and seconded of course by YSL) of the words “adjoining upper” which is used by the Court in its mandate and which the Court earlier defines as the “visible portions of the shoe other than the outsole.” Opinion at 28 n. 25. The Court’s mandate however does not indicate that the words “adjoining upper” are a defined term. As such, adoption by the USPTO of the language in the Court’s mandate, without more, leads a reader left adrift as to what is meant by “upper” or “adjoining upper” leading to a higher level of confusion and increased likelihood of litigation in the future. In an effort to more accurately reflect the Opinion of the Court, Louboutin has urged the USPTO adopt the clear language of this Court on page 28 of the Opinion where it specifically defines the “upper” as “the visible portions of the shoe other than the outsole.” Opinion at 28 n.25. As noted the USPTO feels compelled without more from this Court, to adopt the language contained only in the Mandate per se. YSL has urged such adoption, while Louboutin has urged the clearer language noted. Because the parties and USPTO are unable to agree, we are requesting this Court clarify the Mandate contained in the Opinion. Louboutin’s request is timely pursuant to the Court’s Order dated January 10, 2013 [D.I. 132]. In the Opinion, the Court determined that “Louboutin’s trademark, consisting of a red, lacquered outsole on a high fashion woman’s shoe has acquired limited ‘secondary meaning’ as a distinctive symbol that identifies the Louboutin brand,” but that the evidence before the Court did not support extending the protection of the trademark to instances where a red outsole was used in connection with an all red monochrome shoe, finding under those circumstances , the red outsole did not serve a trademark function. Opinion at 2. On September 27, 2012, the Court issued the Mandate to the USPTO to make “appropriate entry” upon the USPTO’s records to modify the Louboutin Registration in accordance with the Opinion. Noting that it is constrained by the Court’s Mandate, the USPTO has proposed to amend the Louboutin Registration as follows (emphasis added to show the changes proposed): The color(s) red is/are claimed as a feature of the mark. The mark consists of a lacquered red outsole on footwear that contrasts with the color of the adjoining remaining portion of the shoe (known as the “upper”). The dotted lines are not part of the mark but are intended only to show placement of the mark. See December 20, 2012 Letter from Thomas L. Casagrande to counsel of record, , attached hereto as Exhibit 1.
the description of the mark in effect works as a limitation of the description of the goods and services.

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Catherine O’Hagan Wolfe January 25, 2013 Page 3

Both Louboutin and Yves Saint Laurent (“YSL”) submitted comments in response to the USPTO’s proposal. YSL agrees with the language suggested by the USPTO. See January 8, 2013 Letter from David Bernstein to Thomas L. Casagrande, attached hereto as Exhibit 2. Louboutin, on the other hand, is concerned that the USPTO’s proposal will lead to uncertainty because it adopts language that is shorthand for other, more precise, language in the Court’s Opinion, namely, that an “upper” is “the visible portions of the shoe other than the outsole.” See January 4, 2013 Letter from Susan Upton Douglass to Thomas L. Casagrande and January 14, 2013 Letter from Susan Upton Douglass to Thomas L. Casagrande, attached hereto as Exhibits 3 and 4, respectively. The ambiguity of the proposed language from the USPTO is amply shown by the very inability of Louboutin and YSL to agree as to the meaning to be ascribed to the words “adjoining” and “upper” in the modified mark definition. As Louboutin has discussed extensively in its submissions to the USPTO, the only shoes at issue in the proceedings were all red monochrome shoes of YSL. This Court entered its Opinion and Order on such evidence yet the adoption of the proposed language by the USPTO would grant YSL and third parties rights never adjudicated, that is, the possible right to limit the color matching to only parts of a shoe, rather than the entire remaining portion of a shoe that is visible, i.e., the very essence of what is in fact a monochrome treatment. For example, adopting the Court’s shorthand definition of “upper” in the description will create a “misleading impression” among those who are not familiar with the Court’s Decision and Order, requiring such parties to go back and read (or re-read) the Court’s decision (assuming those parties are even aware at the time that the term derives from the Opinion). Without clarification from this Court, one can easily foresee other courts being asked to interpret what this Court meant by “adjoining” and “upper,” particularly since those terms are not within the general lexicon used by the USPTO.2 See, e.g., Ex. 4 at 3-4. The following three examples assuming that rather than as pictured, each has a red outsole (discussed in greater detail in Exhibit 4), elucidate the crux of the issue.

2

For example, as demonstrated in Louboutin’s January 16, 2013 submission to the USPTO, Louboutin, other courts and third parties, including the U.S. Customs and Border Patrol, may have to wrestle with such issues as whether a heel, toe or embellishment of a different color “adjoins” or is part of an upper, or a toe. See Ex. 4 at 3-4.

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Catherine O’Hagan Wolfe January 25, 2013 Page 4

Although these shoes are outside of the Court’s decision because they are not monochromatic, the adoption by the USPTO of the language of the Mandate, where the term “adjoining” and/or “upper” is absent the definition given either by this Court, increases the likelihood of further, costly confusing litigation because clearly infringing shoes would be taken into the realm of questionable. For example, in the shoe on the left, is the heel part of the upper? Is the upper “adjoining”? Should the USPTO’s proposed language be adopted, whether these shoes are excluded becomes at least arguable. Ex. 4. Louboutin believes that all the uncertainty and ambiguity created by the USPTO’s proposed language, “adjoining remaining portion of the shoe (known as the ‘upper’),” can be avoided by using the language the Court itself used in defining a monochrome shoe and thus proposed that the USPTO adopt the following description (emphasis added): The color(s) red is/are claimed as a feature of the mark. The mark consists of a lacquered red outsole on footwear that contrasts with the color of any visible portions of the shoe. The dotted lines are not part of the mark but are intended only to show placement of the mark. See Exs. 3, 4. Louboutin’s proposal is also consistent with the USPTO’s requirement that a mark’s description be precise and unambiguous. Trademark Manual of Examining Procedure (“TMEP”) at § 808.02. (A description “should state clearly and accurately what the mark comprises, and should not create a misleading impression by either positive statement or omission.”). By including the language used directly by the Court to define “upper,” namely, “the visible portions of the shoe other than the outsole,” Opinion at 28 n.25, the description informs the public that any visible portion of the shoe, other than the outsole, comprises the upper and eliminates words in quotations, parentheses or which might be otherwise open to later misinterpretation.

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Catherine O'Hagan Wolfe January 25, 2013 Page 5

The USPTO as indicated in its response (see Ex. 5) believes that it is required to adopt the literal language used by this Court in the Mandate statement and cannot vary such language despite the ambiguity thereof. As such, the USPTO recognized this Court might well want to clarify such language and, on being informed that the parties had sought and obtained an extension until February 1, 2013 to file any request for consideration or clarification, itself indicated that it would not implement its proposed language until, at the earliest, February 4, 2013 and on being advised that either party was seeking clarification from this Court indicated it would stay implementation pending further direction from this Court. See January 16, 2013 Letter from Thomas L. Casagrande to Susan Upton Douglass, Harley I. Lewin and David H. Bernstein, attached hereto as Exhibit 5. For the foregoing reasons, Louboutin respectfully requests that the Court modify the Mandate to remove the words "the adjoining remaining portion of the shoe (known as the 'upper;" and insert in their stead the words" the visible portions of the shoe other than the outsole" the very language used by this Court to define an "upper"and instruct the USPTO to adopt such language as modified. Louboutin's proposal clearly reflects the Court's determination that Louboutin's trademark registration should be limited to exclude only red monochromatic shoes, will not adversely affect YSL and will give greater clarity to all parties concerned now and in the future. We are available to this Court as it may deem necessary or appropriate. Respectfully submitted, MCCARTER & '.

By:

Harley Iytv.,in, Partner

Cc:

Thomas L. Casagrande, Esq. David H. Bernstein, Esq. Jyotin Hamid, Esq. Christian Louboutin SA

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EXHIBIT 1

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OFFICE OF THE GENERAL COUNSEL OFFICE OF THE SOLICITOR

December 20, 2012 VIA UPS & EMAIL

Susan Upton Douglass Fross Zelnick Lehrman & Zissu 866 United Nations Plaza New York, NY 10017 sdouglass@fzlz.com

Harley I. Lewin McCarter & English 245 Park Avenue 27th Floor New York, NY 10167 hlewin@mccarter.com

David H. Bernstein Debevoise & Plimpton LLP 919 Third Avenue New York, NY 10022 dhbernstein@debevoise.com

Re:

Christian Louboutin S.A. v. Yves Saint Laurent Am. Inc., No. 11–3303–cv (2d Cir.), No. 11-cv-2381 (VM) (S.D.N.Y.); U.S. Trademark Reg. No. 3,361,597

Dear Counsel, On September 27, 2012, the U.S. Court of Appeals for the Second Circuit issued its Mandate in the above-referenced appeal and provided a certified copy to the United States Patent and Trademark Office (USPTO). The Mandate provides: Pursuant to 15 U.S.C. § 1119 the Director of the United States Patent and Trade [sic] Office shall make appropriate entry upon that Office’s records to reflect that U.S. Trademark Registration No. 3,361,597, held by Christian Louboutin and dated January 1, 2008, is limited to a red lacquered outsole on footwear that contrasts with the color of the adjoining (“upper”) portion of the shoe. In the Second Circuit’s opinion, the Court defined “upper,” explaining that it was limiting “the trademark to uses in which the red outsole contrasts with the remainder of the shoe (known as the ‘upper’).” Christian Louboutin S.A. v. Yves Saint Laurent Am. Holdings, Inc., 696 F.3d 206, 212 (2d Cir. 2012). The USPTO intends to give effect to the Court’s order by amending the description of the mark in Registration No. 3,361,597 as follows (changes are to the current mark description and are underscored):

OFFICE OF THE SOLICITOR, MAIL STOP 8, P.O. BOX 1450, ALEXANDRIA, VA 22313-1450 – WWW.USPTO.GOV Phone: 571.272.9035 Fax: 571.273-0373

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Susan Upton Douglass Harley Lewin David H. Bernstein Page 2 “The color(s) red is/are claimed as a feature of the mark. The mark consists of a lacquered red outsole on footwear that contrasts with the color of the adjoining remaining portion of the shoe (known as the ‘upper’). The dotted lines are not part of the mark but are intended only to show placement of the mark.” The USPTO is obligated to implement the mandate using the terms provided by the Second Circuit. The USPTO believes the proposed amendment best complies with the Court’s mandate and removes any potential ambiguity regarding the meaning of the term “upper,” as that term was defined by the Court. Based on our review of the docket sheets on PACER, we understand that the parties have not requested any clarification or stay of the Second Circuit’s mandate, such that the USPTO will proceed to implement it as described above. In the event the USPTO’s understanding is incorrect, however, and pursuant to Trademark Manual of Examining Procedure (TMEP) § 1610, the USPTO is providing the parties until January 12, 2013, the opportunity to inform the USPTO if a request for clarification of the Second Circuit’s mandate has been filed by any party. Any party submitting a response to this letter must do so in writing on or before January 12, 2013, directed to the undersigned. The submission must include a copy of the party’s Court filing(s) and a request that the USPTO delay amending the registration until the Court rules on such filing(s). Counsel is reminded to serve copies of any such submission to the other recipients of this letter. Very truly yours,

Thomas L. Casagrande

Digitally signed by Thomas L. Casagrande DN: cn=Thomas L. Casagrande, o=U.S. Patent and Trademark Office, ou=Office of the Solicitor, email=thomas.casagrande@uspto. gov, c=US Date: 2012.12.20 16:26:34 -05'00'

Thomas L. Casagrande Associate Solicitor (571) 272-9035 thomas.casagrande@uspto.gov

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EXHIBIT 2

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DEBEVOISE

0.

PLIMPTON

LLP

919 Third Avenue New York, NY 10022 Tel 2129096000 www.debevoise.com David H. Bernstein Partner Tel 212 909 6696 Fax 212 521 7696 dhbernstein@debevoise.com

January 8, 2013 BY EMAIL AND EXPRESS MAIL Thomas L. Casagrande, Esq. Associate Solicitor U.S. Patent and Trademark Office Office of the Solicitor Mail Stop 8 P.O. Box 1450 Alexandria, VA 22313 -14 50 Re:

Christian Louboutin S.A. v. Yves Saint Laurent Am., Inc., No. 11-3303-cv (2d Cir.), No. ll-cv-2381 (VM)(SDNY); U.S. Trademark Registration No. 3,361,597

Dear Mr. Casagrande: We represent Yves Saint Laurent America, Inc., Yves Saint Laurent America Holding, Inc. and Yves Saint Laurent S.A.S. (collectively, "YSL") in the abovereferenced matter. We write in response to the January 4,2013 letter of Susan Douglass, Esq. regarding the modification to the "Red Sole" trademark (Reg. No. 3,361,597) of Christian Louboutin S.A. ("Louboutin") proposed by the U.S. Patent & Trademark Office ("USPTO") by letter dated December 20,2012. For the reasons set forth below, we believe the USPTO's proposed modification to the description of the Red Sole mark is appropriate and consistent with what was ordered by the U.S. Court of Appeals for the Second Circuit in the above-referenced matter, as reflected most clearly in the Second Circuit's Mandate. By contrast, the alternative language proposed by counsel for Louboutin is at odds with the direction and intent of the Second Circuit. As you know, the USPTO proposed the following modification to the description of the Red Sole trademark registration, with the changes to the current description underscored:

New York • Washington, D.C • London • Paris • Frankfurt • Moscow • Hong Kong • Shanghai

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Thomas L. Casagrande, Esq.

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January 8, 2013

"The color(s) red is/are claimed as a feature of the mark. The mark consists of a lacquered red outsole on footwear that contrasts with the color of the adjoining remaining portion of the shoe (known as the 'upper'). The dotted lines are not part of the mark but are intended only to show placement of the mark." As set forth in your letter of December 20, the USPTO is obligated to implement the Mandate using the terms provided by the Second Circuit. Indeed, the Mandate itself expressly provides the terms that the Second Circuit directed be included in the modified description of Louboutin's trademark registration. The Mandate directs the Director of the UPSTO to make an appropriate entry to reflect that Louboutin's trademark is "limited to a red lacquered outsole on footwear that contrasts with the color of the adjoining ("upper") portion of the shoe." Given the express language of the Second Circuit's Mandate, the suggestion by Louboutin's counsel that the term "upper" should be deleted from the description of the Red Sole trademark does not make sense and would be contrary to the clear direction of the Second Circuit. Moreover, although it is true that the term "upper" is used inconsistently at times in the Second Circuit's opinion, the Court certainly recognized that the term "upper" traditionally refers to a portion of the shoe distinct from other portions of the shoe at issue here, such as the heel, the outsole, and the insole. In describing YSL' s monochrome shoes, for example, the Court explains that the "YSL shoes in the monochrome style feature the same color on the entire shoe, so that the red version is all red, including a red insole, !teel, upper, and outsole." (Op. at 6). Likewise, the record before the Second Circuit reflects that both parties understood the term "upper" to refer to a portion of the shoe distinct from the heel, the outsole, and the insole. See, e.g., A-886, A-892, A-893, and A-922 (deposition testimony ofMr. Louboutin and ofYSL's shoe designer distinguishing between the upper, heel, platform, and sole of various shoe models). The USPTO's use of the term "upper" in its proposed formulation is consistent not only with the express direction of the Court set forth in the Mandate, but also with the Second Circuit's intention to limit Louboutin's trademark to uses where the red outsole contrasts with a different color used on the upper of the shoe (exemplified, for instance, by the use of a red outsole on an otherwise black pump). As the Court explained it its opinion, "it is the contrast between the sole and the upper that causes the sole to 'pop,' and to distinguish [Louboutin as] its creator." (Op. at 29). The Court concluded, based on that finding and the record before it, that Louboutin did not establish secondary meaning in an application of a red sole to a red shoe, "but only where the red sole contrasts with the 'upper' of the shoe." (Op. at 29-30).

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Thomas L. Casagrande, Esq.

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January 8, 2013

The formulation proposed by counsel for Louboutin would grant Louboutin the right to claim as infringing otherwise monochromatic red shoes (red shoes with red soles), but which feature, for example, a black heel cap or a gold buckle fastened on the toe. This clearly was not the intent of the Second Circuit. The Court was explicit in holding that the use of a red lacquer on the outsole of a red shoe would not be a use of the Red Sole mark (Op. at 30), a conclusion that was based on its finding that the secondary meaning of Louboutin' s Red Sole trademark extends "only to the use of a lacquered red outsole that contrasts with the adjoining portion of the shoe" (id), referred to in the opinion and the Mandate as "the upper." In sum, we believe the USPTO's proposed formulation for the description of the Red Sole trademark should be adopted because it is consistent with the direction set forth in the Mandate, is truer to the intent of the Second Circuit's opinion, and accurately reflects the evidence in the record, upon which the Second Circuit decision was based. Respectfully submitted,

David H. Bernstein cc: Harley Lewin, Esq. Susan Upton Douglass, Esq.

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EXHIBIT 3

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FROSS ZELNICK LEHRMAN & ZISSU, P.C.

Susan Upton Douglass 212.8135995 sdouglass@fzlz.com

VIA E-MAIL: Thomas.Casagrande@uspto.gov VIA Express Mail
January 4,2013 Thomas L. Casagrande, Esq. Associate Solicitor U.S. Patent and Trademark Office Office of the Solicitor Mail Stop 8 P.O. Box 1450 Alexandria, VA 22313-1450 Re: Christian Louboutin S.A. v. Yves Saint Laurent Am. Inc., No. 11-33-3-cv (2d Cir.), No. ll-cv-2381 (VM)(SDNY) U.S. Trademark Registration No. 3,361,597

Dear Mr. Casagrande: We write on behalf of Christian Louboutin S.A. ("Louboutin") in response to your letter of December 20, 2012, setting forth the proposal of the USPTO to amend Registration No. 3,361,597 for the "Red Sole" trademark, in accordance with the mandate of the Second Circuit opinion. For the reasons set forth below Louboutin has reached the conclusion that the proposed changes to the description of the subject mark do not accurately reflect the decision of the Court of Appeals and that alternative language should be used As you are aware, the mandate directs that an "appropriate" entry be made, so that the amendment of the registration will accurately reflect the specific ruling of the Court of Appeals, and be worded so as not to create needless ambiguity or uncertainty, either for the trademark owner, the adversary in the litigation, or third parties in general. The USPTO has proposed the following amendment to the description of the Red Sole trademark registration as follows, with the changes to the current description underscored: The color(s) red is/are claimed as a feature of the mark. The mark consists ofa lacquered red outsole on footwear that contrasts with the color of the adjoining remaining portion of the shoe [known as th ' upper '). The dotted lines are not part of the mark but are intended only to show placement of the mark.

{F1l46658.4 )

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Louboutin believes the Court of Appeals modification to the Red Sole trademark registration was intended to only exclude red monochrome shoes, which in fact formed the limited subject of the proceedings before them. The Court in reciting its decision, on page 2 of its Opinion, frames the decision clearly, stating "we limit the trademark to uses in which the red outsole contrasts with the color of the remainder of the shoe. " The Court later uses the word "upper" to describe that very same "remainder": "As explained below, pursuant to Section 37 of the Lanham Act, 15 U.S.C. § 1119, we limit the trademark to uses in which the red outsole contrasts with the remainder of the shoe (known as the 'upper')." (Op. at 4, emphasis added). Thus the definition of "upper" as used by the Court of Appeals is in fact the entire remaining visible portion of the shoe excluding the outsole. The Court, after reciting its decision, describes the facts of the dispute and notes the shoe by Yves Saint Laurent ("YSL") at issue in the litigation was a shoe that was completely red in all respects - top, bottom, and heel. On page 6 of its Opinion, the Court stated "In 2011, YSL prepared to market a line of 'monochrome' shoes in purple, green, yellow, and red. YSL shoes in the monochrome style feature the same color on the entire shoe, so that the red version is all red, including a red insole, heel, upper, and outsole." (Op. at 6, emphasis added). Here the word "upper" is used in its more traditional limited definition. The Court, however, goes on throughout its Opinion to use the word "upper" in its more expansive form, i.e. , to encompass the entire remaining visible portion of the shoe: "We hold that the lacquered red outsole, as applied to a shoe with an 'upper' [footnote 25] of a different color, has 'come to identify and distinguish' the Louboutin brand [citation omitted], and is therefore a distinctive symbol that qualifies for trademark protection." The Court stated in its entirety in footnote 25, as to "upper": "As noted above, we use the word 'upper' to refer to the visible portions of the shoe other than the outsole ." (Op. at 28, emphasis added). Again the Court makes clear its intention to have the Red Sole trademark modified to exclude only shoes where the entire remaining portion of the shoe, not merely the adjoining portion of an upper, matches the color of the outsole: "Although, as set forth below, we determine that the [Red Sole] Mark is ineligible for protection insofar as it would preclude competitors' use of red outsoles in all situations, including the monochromatic use now before us, we conclude that the Mark has acquired secondary meaning - and thus the requisite 'distinctiveness' to merit protection - when used as a red outsole contrasting with the remainder of the shoe." (Op. at 25, emphasis in the original). We believe the language of the Opinion of the Second Circuit opinion makes clear its intention to limit from the Louboutin Red Sole mark only when the entire shoe is red.

{F1146658.4 }

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As a result, we believe the appropriate language for the USPTO to adopt in amending the description of the Red Sole mark would be the following: The color(s) red is/are claimed as a feature of the mark. The mark consists ofa lacquered red outsole on footwear that contrasts with the color of any visible portions of the shoe. The dotted lines are not part of the mark but are intended only to show placement of the mark. Aside from the question of compliance with the Court of Appeals decision, there are strong policy reasons which compel adoption of our suggested language in lieu of that suggested by the USPTO. To define all aspects of the shoe as an "adjoining upper" as used in short-hand form in the Court's opinion would require third parties to go back and read a 31-page decision since the Court had a specific definition in mind for the word "upper" which is not necessarily the definition used by the general publici. Thus, use of the term "upper" or "adjoining upper" in the description of the mark in Registration No. 3,361,597 merely serves to inject ambiguity and uncertainty into a description of the mark that was not intended by the Court. Rather than guide third parties in a constructive manner, the language suggested by the USPTO would be more likely than not to give rise to additional litigation over what then constitutes an "upper" that adjoins an outsole. For example, if a third party were to market a shoe with a lacquered red outsole, a red top part but with a black heel, would that infringe Louboutin's trademark registration? Note that a heel is "below" the sole, and thus is not technically an "upper." What about a red lacquered outsole, a red top with a black stripe across the top, and a gold buckle? These decorative elements are not "adjoining" but clearly make the shoe not monochromatic and outside of what was considered by the Court. The Court made clear that its finding was premised upon the conclusion that when YSL used a red outsole in a monochrome manner, i.e., all other visible parts of the shoe were the same red, YSL was not using the outsole as a trademark, such that the outsole arguably disappeared when seen on a monochrome shoe. In the example given above, the outsole, differing from a heel color, would not disappear. Nor would it disappear in the myriad other treatments that could be given to various visible parts of a shoe that could be in different colors or even different shades of the same color, yet because they were not seen as adjoining, would arguably place such shoes outside the scope of protection afforded to Louboutin by its Red Sole trademark registration. This clearly :was and is not the intention of the Court of Appeals. We believe, therefore, rather than use the short-hand definition of "upper," it is more accurate to repeat the language used directly by the Court when it defined "upper" - i.e.,

1 "Upper" is defined as "the part of a shoe or boot above the sole" (Webster's New World Dictionary, 2d College Ed. 1984)

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"the visible portions of the shoe other than the outsole" or to delete the word "upper" entirely as that is only used as a short-hand definition by the Court. The Court did not restrict this definition to only those aspects of the "visible portions of the shoe" that are adjoining, but rather, any visible portions of the shoe. As stated above, to stay true to the language used and intended by the Court, Louboutin respectfully requests that the description of the Red Sole mark read in pertinent part, "The mark consists of a lacquered red outsole on footwear that contrasts with the color of any visible portions of the shoe." We trust that with this explanation, the USPTO will agree that Louboutin's proposed language for the amendment is both within the scope of the Second Circuit's mandate and the precise language of the Opinion. The Court of Appeals provided a period of 14 days after entry of the District Court's final order if either party wanted further review of this matter. As the decision ofthe District Court was entered on 27 December 2012, that 14-day period would expire on or about 10 January 2013. In view of this very tight timeline, we look forward to receiving expedited confirmation from the USPTO as to the specific language for the amendment.

Susan Upton Douglass Fross Zelnick Lehrman & Zissu, P.C. Attorneys for Christian Louboutin Cc: Harley Lewin, Esq. David Bernstein, Esq.

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EXHIBIT 4

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Susan Upton Douglass 212.813.5995 sdouglass@fzlz.com

VIA E-MAIL: Thomas.Casagrande@uspto.gov VIA Express Mail January 14, 2013 Thomas L. Casagrande, Esq. Associate Solicitor U.S. Patent and Trademark Office Office of the Solicitor Mail Stop 8 P.O. Box 1450 Alexandria, VA 22313-1450

Re:

Christian Louboutin S.A. v. Yves Saint Laurent Am. Inc., No. 11-33-3-cv (2d Cir.), No. 11-cv-2381 (VM)(SDNY) U.S. Trademark Registration No. 3,361,597

Dear Mr. Casagrande: This letter is submitted by Susan Upton Douglass, prosecution counsel, and Harley I Lewin, litigation counsel from McCarter & English, on behalf of Christian Louboutin (“Louboutin”). We are in receipt of the letter from counsel for Yves Saint Laurent America, Inc., Yves Saint Laurent America Holding, Inc., and Yves Saint Laurent America S.A.S. (collectively, “YSL ”) to you dated January 8, 2013 For the reasons set forth in our letter dated January 4, 2013, and as explained in further detail below, Louboutin respectfully disagrees that the USPTO’s proposed modification to the description of the Louboutin trademark should be adopted in its entirety, as urged by YSL. It remains Louboutin’s position that the alternative language it has suggested most accurately reflects the Court of Appeals’ true intent. For ease of reference, Louboutin’s proposed language is: The color(s) red is/are claimed as a feature of the mark. The mark consists of a lacquered red outsole on footwear that contrasts with the color of any visible portions of the shoe. The dotted lines are not part of the mark but are intended only to show placement of the mark. Contrary to YSL’s claim, the Court of Appeals did not outright “limit” Louboutin’s “Red Sole” trademark (Registration No. 3,361,597). Rather, the mark stands but with one limited exception. The Court of Appeals modified the Red Sole trademark only to exclude red monochrome shoes. Any further limitation of the mark would have been

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outside of the Court’s authority. Indeed, based on well-settled principles of appellate jurisprudence, the Court’s ruling was necessarily constrained by the evidentiary record before it, in this case, monochrome red shoes by YSL. On the basis of that evidence, and that evidence alone, the Court determined that the red outsole could not serve as a trademark because there was no contrast that caused the outsole to “pop.” YSL does, however, acknowledge that the USPTO is “obligated to implement the Mandate using the terms provided by the Second Circuit.” (Letter at 2, emphasis added). Despite this express admission, YSL urges the USPTO to ignore the Court’s explicit definition of the term “upper” by insisting that the parties “understood” the term to refer to a portion of the shoe distinct from the heel, the outsole, and the insole. (Letter at 2). YSL’s position ignores the fact that the Court defined the term “upper” in a very specific manner, to wit, “we use the word “upper” to refer to the visible portions of the shoe other than the outsole.” (Op. at 28, n. 25, emphasis added). This distinction is the very reason that the Court’s short-hand form of “adjoining upper” should not be used in redefining the mark. The Court’s definition differs from that of the industry and would require third parties to continually have to go back and read a 31-page decision to divine the Court’s intent – if indeed they are aware of the decision. As noted in our January 4 letter, the USPTO/YSL’s proposed language would likely lead to litigation over what constitutes an “upper” that “adjoins” the outsole. By way of illustration, and to better frame Louboutin’s concerns, we offer the following:

This photograph depicts the red monochrome YSL shoe at issue in the litigation (left) as compared with a contrasting one by Louboutin (right). The YSL shoe is completely red in all aspects and corresponds exactly to the definition given by the Court of Appeals for a “monochrome” shoe: the top, bottom, and heel are a uniform red color. It is the single exception to the Red Sole trademark as found by the Court of Appeals.

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The shoe immediately above, the photo of which is from the Louboutin web site, perhaps best illustrates the crux of Louboutin’s position. Such style of shoe was not before the Court of Appeals when it rendered its decision. Moreover, it is most clearly not a monochromatic red shoe, which was the basis for the Court’s finding (“We further hold that the record fails to demonstrate that the secondary meaning of the Red Sole Mark extends to uses in which the sole does not contrast with the upper – in other words when a red sole is used on a monochromatic red shoe.”) (Op. at 29, emphasis added). If fakes of this shoe were imported without the Louboutin name, protection against a shoe of this kind would become problematical under the proposed USPTO language as urged by YSL as neither the black portion nor the white heel might be considered “adjoining,” and the heel, which is below the top part of the shoe, might not be considered part of the “upper.” However, this shoe is clearly not monochromatic and has no resemblance to the YSL shoe considered by the Court of Appeals. Whenever fake shoes of this nature come to the attention of the U.S. Customs and Border Protection, they are routinely stopped and seized by Customs even if the name is different or there is no name at all1. The seizures are based on the Red Sole trademark as registered. However, if the language proposed by the USPTO and urged by YSL is adopted, it would give counterfeiters room to argue that these blatant infringements are now permissible. This could have a devastating financial impact on Louboutin and also deceive consumers, acting to effectively cause Louboutin to lose the appeal of its unique Red Sole mark. We are absolutely certain this was not the intention of the Court of Appeals since, as noted above, the Court of Appeals had as a matter of the record before them only red monochrome shoes of YSL.

The Court of Appeals took judicial notice of a recent seizure in its decision (Op. at 28, n. 24), noting that Customs had seized 20,000 counterfeit Louboutin shoes illegally shipped to the United States, with a retail value of over $18 million. In fact, by the end of the Summer of 2012 this number had risen to almost 40,000 pairs of shoes, none of which carried the name Louboutin thereon ,i.e., all were stopped by reason of illegal use of the Red Sole mark.
1

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There is a strong distinction between the term “upper” as used by the Court of Appeals and that urged upon the USPTO by YSL. The language being considered by the USPTO creates rather than reduces ambiguity. Consider the shoe in the picture immediately below.

Picture this shoe with a red outsole that matched the platform just where the toes rest, but with the remainder of the shoe in the colors shown in the photograph. What then is the upper? Does a shoe such as this with a red sole then become excluded from the protection afforded the Louboutin Red Sole mark? One where the heel, the heel cup, and other portions of the shoe are different colors but some part of the forefoot is the same color? This was never before the Court of Appeals and their decision cannot be read in any way to condone the importation and sale of such a shoe. Yet, again, if the definition of the mark now urged by YSL is adopted, whether the shoe pictured with a red sole is excluded becomes at least arguable. Finally, consider if the below shoe had a red outsole.

If one adopts the YSL’s urged definition of “adjoining” what portion of the parts -- as there are several -- constitutes an “upper” when you look at this image? Once again, the shoe clearly is not monochromatic. Once again, it is outside of the scope of the Court of Appeals’ decision. However, should the proposed language urged by YSL be adopted, it

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then takes what would be clearly an infringing shoe into the realm of questionable. This unintended limitation on the mark (which is amply illustrated when shown against the monochrome red) is the very reason that Louboutin’s proposed language “contrasts with the color of any visible portions of the shoe” is a more accurate reflection of the Court of Appeals’ ruling and as noted above is precisely the language used by the Court of Appeal itself to define “upper.” In sum, Louboutin’s language accurately reflects the decision of the Court of Appeals and its Mandate to the USPTO. The language urged by Louboutin would be clear to third parties and enable both Louboutin and such third parties to know precisely what the Louboutin Red Sole mark is, rather than having to discern what is meant by the less clear and ambiguous language urged by YSL. Moreover, the language urged by Louboutin is the language used by the Court of Appeals because it reflects the evidence before them, red monochrome shoes of YSL-- not some partially red upper portion but with straps, heels or other elements in different colors—but rather, all red, inclusive of the heel, the toe, the sides, the entire product matching so as to arguably create a situation in which the red sole does not function as a mark, but merely continues the ornamentation of the monochrome color scheme throughout the product. The USPTO cannot go further in its proposed definition than the Court provided nor should YSL obtain through such a definition that which they did not obtain as a result of the decision of the Court of Appeals. For all of the reasons stated in our January 4, 2013 letter as well as above, we urge the USPTO to reject the language initially proposed and urged by YSL and adopt the clearer, more precise language proposed by Louboutin. We look forward to receiving the USPTO’s final determination. Very truly yours,

Susan Upton Douglass Cc: David Bernstein, Esq.

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EXHIBIT 5

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UNITED STNFES PATENT AND TRADEMARK OFFICE OFFICE OF THE GENERAL COUNSEL OFFICE OF THE SOLICITOR January 16, 2013 VIA UPS & EMAIL Susan Upton Douglass Fross Zelnick Lehrman & Zissu 866 United Nations Plaza New York, NY 10017 sdouglass@fzlz.com Harley I. Lewin McCarter & English 245 Park Avenue 27th Floor New York, NY 10167 hlewin@mccarter.com David H. Bernstein Debevoise & Plimpton LLP 919 Third Avenue New York, NY 10022 dhbernstein@debevoise.com

Re:

Christian Louboutin S.A. v. Yves Saint Laurent Am. Inc., No. 11-3303-cv (2d Cir.), No. 11-ev-2381 (VM) (S.D.N.Y.); U.S. Trademark Reg. No. 3,361,597

Dear Counsel, The United States Patent and Trademark Office (USPTO) has considered the comments received from counsel for Christian Louboutin S.A. (Louboutin) on January 4, 2013, from Yves Saint Laurent America, Inc., Yves Saint Laurent Holding, Inc., and Yves Saint Laurent S.A.S. collectively (YSL) on January 8, 2013, and again from Louboutin on January 14, 2013. The comments concerned the USPTO’s proposal to give effect to the Judgment/Mandate of the U.S. Court of Appeals for the Second Circuit (Doc. 126), issued on September 27, 2012, in the abovereferenced appeals, by amending the description of the mark in Registration No. 3,361,597 as follows (changes are to the current mark description and are underscored): The color(s) red is/are claimed as a feature of the mark. The mark consists of a lacquered red outsole on footwear that contrasts with the color of the adjoining remaining portion of the shoe (known as the "upper"). The dotted lines are not part of the mark but are intended only to show placement of the mark. YSL agrees with the USPTO’s proposal. Louboutin disagrees and urges the USPTO to instead enter the following amendment to the registration: The color(s) red is/are claimed as a feature of the mark. The mark consists of a lacquered red outsole on footwear that contrasts with the
OFFICE OF THE SOLICITOR, MAIL STOP 8, P.O. BOX 1450, ALEXANDRIA, VA 22313-1450 - WVVW.USPTO.GOV Phone: 571.272.9035 Fax: 571.273-0373

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Susan Upton Douglass Harley I. Lewin David H. Bernstein January 16, 2013 Page 2 color of any visible portions of the shoe. The dotted lines are not part of the mark but are intended only to show placement of the mark. Although appellate mandates are typically directed to the originating district court, section 37 of the Lanham Act, 15 U.S.C. § 1119 ("section 1119"), authorizes courts to issue orders with respect to a party’s trademark registration and specifies that the USPTO Director "shall make appropriate entry upon the records of the [USPTO], and shall be controlled thereby." The Judgment/Mandate in this case was directed to the USPTO pursuant to section 1119. While the ’ USPTO appreciates that a court’s underlying decision may provide insight into the meaning of terms the court uses in an order issued pursuant to section 1119, the USPTO does not have discretion to deviate from the terms of a court’s section 1119 order in any significant or substantive respect. Cf Briggs v. Penn. R.R. Co., 334 U.S. 304, 306 (1948) ("an inferior court has no power or authority to deviate from the mandate issued by an appellate court"); In re Ivan F. Boesky See. Litig., 957 F.2d 65, 69 (2d Cir. 1992) ("Indeed, because the district court has no discretion in carrying out the mandate, the appellate court retains the authority to determine whether the terms of the mandate have been ’scrupulously and fully carried out.’") (citation omitted). Ifa party has concerns about the language a court uses in a section 1119 order, the appropriate course of action is for the party to seek a modified order from the court that issued the order. Here, the Second Circuit’s mandate specified in relevant part as follows (emphasis added in underlining): Pursuant to 15 U.S.C. § 1119 the Director of the United States Patent and Trade Office shall make appropriate entry upon that Office’s records to reflect that U.S. Trademark Registration No. 3,361,597, held by Christian Louboutin and dated January 1, 2008, is limited to a red lacquered outsole on footwear that contrasts with the color of the adioinin~. ("upper") portion of the shoe. The USPTO must give effect to this language. The USPTO has concluded that its proposed amendment most appropriately does so. The USPTO does not believe that it has the authority to enter the amendment Louboutin urges absent a new order from the Second Circuit so directing because Louboutin’s preferred wording deviates substantially from the mandate’s language quoted above.

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Susan Upton Douglass Harley I. Lewin David H. Bernstein January 16, 2013 Page 3 Given the above, the USPTO normally would proceed to enter its proposed amendment to the registration. However, on January 10, 2013, Louboutin’s counsel informed the USPTO that the Second Circuit granted the parties’ request to extend until February 1, 2013, the deadline for the parties to restore jurisdiction to the Second Circuit to consider whatever arguments remain or arise relating to the case, in particular the USPTO’s pending amendment to the registration. Under the circumstances, and because any amendment to the registration is being made at the direction of the Second Circuit pursuant to the court’s authority under section 1119, the USPTO believes it is appropriate to postpone entry of the proposed amendment to the registration until February 4, 2013. Postponing entry of the amendment until February 4, 2013, will provide any party wanting clarification of the language the Second Circuit used in its mandate sufficient time to make such request to the Second Circuit and inform the USPTO of its request. Any party making such a request to the Second Circuit should notify the USPTO in writing on or before February 1, 2013, by sending a copy of the request to the undersigned via email. If the USPTO receives timely notification of such a request to the Second Circuit, the USPTO will stay entry of the proposed amendment until after the Second Circuit rules on the request. Respectfully, UNITED STATES PATENT AND TRADEMARK OFFICE

Thomas Casagra II U

L. Casagrar~de DN: cn=Thomas L Th .... L Digitally signed byCasagrande, o=U.S. Patent and Trademark Office, ou=Office of the Solicitor, email=t homas,casagra nde@uspto.gov, ~ Date: 2013.01.1611:15:49-05’00’

=os

By: Thomas L. Casagrande Associate Solicitor thomas.casagrande@uspto.gov cc: Sharon Marsh; Cynthia Lynch; Christina Hieber

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MANDATE
Before: JOSÉ A. CABRANES, CHESTER J. STRAUB, DEBRA ANN LIVINGSTON, Circuit Judges.

______________________________________________ At a stated term of the United States Court of Appeals for the Second Circuit, held at the Daniel Patrick Moynihan United States Courthouse, 500 Pearl Street, in the City of New York, on the 5th day of September, two thousand twelve.

UNITED STATES COURT OF APPEALS FOR THE SECOND CIRCUIT

___________________________________________________ CHRISTIAN LOUBOUTIN S.A., CHRISTIAN LOUBOUTIN, L.L.C., CHRISTIAN LOUBOUTIN, Plaintiffs-Counter-Defendants-Appellants, v. YVES SAINT LAURENT AMERICA HOLDING, INC., YVES SAINT LAURENT S.A.S., YVES SAINT LAURENT AMERICA, INC., Defendants-Counter-Claimants-Appellees, YVES SAINT LAURENT, (an unincorporated assocation), JOHN DOES, A TO Z, (Unidentified), JANE DOES, A TO Z, (Unidentified), XYZ COMPANIES, 1 TO 10, (Unidentified), Defendants-Appellees. ___________________________________________________ The appeal in the above captioned case from an order of the United States District Court for the Southern District of New York was argued on the District Court's record and the parties' briefs. Upon consideration thereof, IT IS HEREBY ORDERED, ADJUDGED and DECREED that the order of the District Court is AFFIRMED in part, REVERSED in part, and REMANDED for further proceedings in accordance with the opinion of this Court. Pursuant to 15 U.S.C. § 1119 the Director of the United States Patent and Trade Office JUDGMENT Docket No.: 11-3303

MANDATE ISSUED ON 09/27/2012

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shall make appropriate entry upon that Office’s records to reflect that U.S. Trademark Registration No. 3,361,597, held by Christian Louboutin and dated January 1, 2008, is limited to a red lacquered outsole on footwear that contrasts with the color of the adjoining (“upper”) portion of the shoe.

For The Court: Catherine O’Hagan Wolfe, Clerk of Court