Modifying circuit court's mandate to USPTO requires "exceptional circumstances"

In Christian Louboutin SA v Yves Saint Laurent Am Holding Inc (Case No 11-3303-cv, March 8 2013) (per curiam), the US Court of Appeals for the Second Circuit has denied a motion to modify a mandate issued by the court in an earlier decision directing the US Patent and Trademark Office (USPTO) to change a trademark registration to limit the trademark of a red lacquered outsole on footwear to shoes where the shoe upper is a contrasting colour.

In its September 2012 decision, the Second Circuit overruled the district court, which had held that a single colour can never serve as a trademark in the fashion industry. The Second Circuit ruled that, while Louboutin’s trademark for a red sole with contrasting upper was valid, the evidence did not show that the secondary meaning of Louboutin’s red sole mark extends to uses where the upper portion of the shoe does not contrast (ie, a monochromatic shoe). Therefore, the court directed the USPTO to limit Louboutin’s trademark to only those situations where the red lacquered outsole is used with an adjoining upper that contrasts in colour.

Louboutin subsequently filed a letter motion with the Clerk of the Court, requesting a modification of that mandate. Louboutin explained that the USPTO intended to adopt the court’s language verbatim, and Louboutin requested that the court modify the mandate in a manner that would be more precise.

The Second Circuit denied that motion. The court explained that granting the request would require the court to recall the mandate, a power that “can only be exercised in extraordinary circumstances” and “is one of last resort, to be held in reserve against grave, unforeseen contingencies”.

The court enumerated four factors to be considered in connection with whether to recall a mandate:

1. whether the governing law is unquestionably inconsistent with the earlier decision;
2. whether the movant brought to the court’s attention that a dispositive decision was pending in another court;
3. whether there was a substantial lapse in time between the issuing of the mandate and the motion to recall the mandate; and
4. whether the equities “strongly favour” relief.

The court ruled that Louboutin made no showing that any of the four factors favoured a recall and that the matter did not present the “exceptional circumstances” required to recall a mandate.

The case shows that, when asking a circuit court to modify a mandate, a party must make a strong showing that the circumstances are exceptional and meet the high burden required by the four factors considered by the Second Circuit in connection with such a petition.

Sara Sunderland, McDermott Will & Emery LLP, Silicon Valley