## Facts

- Louis Vuitton sold handbags featuring its Toile Monogram mark and introduced the “Multicolore” version: LV initials and floral motifs in 33 bright colors on a white or black background.
- The Multicolore line was widely advertised and quickly became well known among consumers of high-end handbags.
- Dooney & Bourke launched its “It-Bag” collection using repeating “DB” initials in multiple bright colors on a light background, along with other design elements (e.g., colored trim and hang tags).
- Louis Vuitton claimed Dooney’s It-Bags were confusingly similar in overall appearance and misappropriated the Multicolore trade dress.
- Louis Vuitton sued under the Lanham Act and New York law for trademark infringement and unfair competition, and sought relief under the Federal Trademark Dilution Act (FTDA).
- The district court denied Louis Vuitton’s motion for a preliminary injunction, finding no sufficient showing of likely confusion and no showing of dilution.
- Louis Vuitton appealed the denial of preliminary injunctive relief.

## Issues

1. Whether the district court applied the correct likelihood-of-confusion analysis in denying a preliminary injunction on the Lanham Act and related New York claims, including whether it improperly relied on side-by-side comparison and undervalued overall commercial impression.
2. Whether Louis Vuitton presented sufficient evidence of actual dilution to obtain preliminary injunctive relief under the FTDA.

## Decision

- The Second Circuit vacated the denial of a preliminary injunction in part and remanded for reconsideration of the infringement and unfair competition claims under the correct likelihood-of-confusion framework.
- The court affirmed the denial of a preliminary injunction on the FTDA dilution claim because Louis Vuitton failed to show actual dilution.
- The court emphasized that the appeal concerned only entitlement to preliminary relief, not final liability.

## Legal Principles

- Likelihood of confusion must be assessed under the Polaroid factors with attention to overall commercial impression and realistic marketplace conditions, including sequential viewing and imperfect consumer recollection.
- A court should not substitute a courtroom, side-by-side comparison for the inquiry into how consumers encounter the products in the market.
- At the preliminary-injunction stage, the plaintiff must show irreparable harm and either (a) likelihood of success on the merits or (b) serious questions going to the merits with the balance of hardships tipping decidedly in the plaintiff’s favor; the court should not effectively require proof of final liability.
- Under the FTDA (as then interpreted), a plaintiff seeking an injunction must show actual dilution, not merely a likelihood of dilution.

## Conclusion

The Second Circuit required reconsideration of Louis Vuitton’s confusion-based claims because the district court’s analysis overemphasized side-by-side differences rather than marketplace perception, but it rejected Vuitton’s federal dilution theory at the preliminary stage for failure to prove actual dilution.


Louis Vuitton Malletier v. Dooney & Bourke, Inc., 454 F.3d 108 (2d Cir. 2006)