UnIP (UnIntellectual Property): Trademark for Monochromatic Color in Fashion Industry

The United States Court of Appeals for the Second Circuit has reversed the Southern District of New York’s decision that invalidated Christian Louboutin’s trademark for its red, lacquered outsole on its women’s shoes. However, it clarified that Louboutin’s may not enjoin a competitor from using a red sole as part of a monochrome red shoe because Louboutin does not always have exclusive trademark rights to red lacquered outsoles. The issue before the Court was “whether a single color may serve as a legally protected trademark in
the fashion industry and, in particular, as the mark for a particular style of high fashion women’s
footwear.” The answer…yes BUT.

The Court summarized its opinion as follows:

“We conclude that the District Court’s holding that a single color can never serve as a trademark
in the fashion industry, Christian Louboutin S.A. v. Yves Saint Laurent Am., Inc., 778 F. Supp. 2d 445, 451,
457 (S.D.N.Y. 2011), is inconsistent with the Supreme Court’s decision in Qualitex Co. v. Jacobson
Products Co., 514 U.S. 159, 162 (1995), and that the District Court therefore erred by resting its denial of
Louboutin’s preliminary injunction motion on that ground. We further conclude 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. 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 color of the remainder of the shoe. We conclude that the trademark,
as thus modified, is entitled to trademark protection. Because Louboutin sought to enjoin YSL from
using a red sole as part of a monochrome red shoe, we affirm in part the order of the District Court
insofar as it declined to enjoin the use of red lacquered outsoles in all situations. However, we reverse
in part the order of the District Court insofar as it purported to deny trademark protection to
Louboutin’s use of contrasting red lacquered outsoles. We enter judgment accordingly, and we remand
for further proceedings with regard to YSL’s counterclaims.”

So, Louboutin’s trademark rights extend only to where the red outsole contrasts with the color of the remaining shoe. Defendants may still try to kick this to the Supreme Court in hopes of remanding to the opinion of the District Court. For now, competitors can tread lightly and avoid stepping on Louboutin’s trademark rights to its red color. However, competitors would be well-served to remember a modified Nancy Sinatra tune: these high-priced pumps were made for litigating, and that’s just what they’ll do, one of these days competitors better watch out or these pumps are gonna litigate with you.

Christian Louboutin S.A. v. Yves Sain Laurent Am., Inc.


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