By Blake Farion
On September 5, 2012, the Second Circuit ruled on Louboutin v. Yves Saint Laurent, the “red-sole shoe” case.1 Louboutin had obtained a trademark for red soles on a shoe and sought to preliminarily enjoin Yves Saint Laurent from marketing shoes also bearing red soles. The decision decided Christian Louboutin’s (“Louboutin”) appeal of the district court’s denial of the requested injunction and order that Louboutin show cause or face cancellation of the disputed trademark.2 Louboutin survived with its mark mostly intact but Yves Saint Laurent (“YSL”) nonetheless escaped liability.3
Since 1992, Louboutin has designed high-end women’s shoes.4 Its signature is the bright red lacquered outsole that is usually different in color from the rest of the shoe – the “Red Sole Mark.”5 In March 2007, Louboutin applied to the United States Patent and Trademark Office (“USPTO”) for a trademark for red-soled shoes, and in January 2008 the USPTO registered the mark.6
YSL, which has sold monochromatic shoes, including all-red shoes since 1970, launched a new line in 2011.7 Louboutin discovered that YSL sold a monochromatic red shoe and requested that its competitor remove the shoe from the market.8 The parties attempted to negotiate a settlement, but those efforts failed.9 In April 2011, Louboutin then sued YSL seeking a preliminary injunction to prevent YSL from selling any shoe with a red sole.10 YSL filed a counterclaim seeking cancellation of the Red Sole Mark and damages for tortious interference and unfair competition.11
The District Court for the Southern District of New York denied Louboutin’s motion for a preliminary injunction and ruled that Louboutin’s Red Sole Mark was invalid.12 The District Court declared that no single color could be registered with regard to fashion, stating that “the Court cannot conceive that the Lanham Act could serve as the source of the broad spectrum of absurdities that would follow recognition of a trademark for the use of a single color for fashion items.”13
In deciding the case, the Second Circuit first looked at the history of cases concerning single-color marks.14 The landmark case addressing the ability to trademark single colors is Qualitex v. Jacobson Products. In Qualitex, the Supreme Court reversed the Ninth Circuit’s refusal to protect Qualitex’s use of a particular green-gold color on dry cleaning pads. The Supreme Court held that the color may be registered, provided the use is (1) non-functional and (2) has acquired distinctiveness – also known as secondary meaning.15
In applying the Qualitex standard, the Second Circuit used a series of factors from earlier Second Circuit cases to determine if the Red Sole Mark had secondary meaning.16 These factors were:
- advertising expenditures;
- consumer studies linking the mark to a source;
- unsolicited media coverage of the product;
- sales success;
- attempts to plagiarize the mark; and
- length and exclusivity of the mark’s use.17
The Second Circuit found “extensive evidence of Louboutin’s advertising expenditures, media coverage, and sales success . . . .”18 The court also looked at testimony of the chief executive officer of YSL’s parent company, who noted that the fashion world recognized Louboutin’s red-soled shoes as distinct marks of its designs.19 The court declared that the Red Sole Mark had acquired distinctiveness and thus qualified for trademark protection - with one exception.20 There was insufficient evidence in the record, to convince the court that Louboutin proved the requisite acquired distinctiveness for use of the Red Sole Mark on an all-red shoe.21 The mark itself was indicative of Louboutin’s designs (and thus had acquired distinctiveness) only when the sole contrasted with the remainder of the shoe.22 As a result, the court ordered the PTO to limit the scope of the mark to situations in which the sole contrasts with the rest of the shoe.23
The Second Circuit also discussed the functionality of color marks in general.24 The court observed that determining aesthetic functionality is a fact-specific endeavor, and the standard is to determine whether granting exclusive protection to a mark “would put competitors at a significant non-reputation-related disadvantage.”25 The court refused to declare color marks functional per se and instead acknowledged the possibility that a monochromatic mark may be protectable in fashion with sufficient secondary meaning.26 But the discussion was mere dicta as it limited the mark in question to require color contrast.27
In the end, the Second Circuit affirmed the district court’s refusal to issue a preliminary injunction preventing YSL from selling monochromatic shoes and reversed the denial of Louboutin’s trademark with respect to contrasting red-soled shoes.28 Because YSL’s shoe was all red, however, it did not infringe Louboutin’s mark.29 Finding insufficient evidence to support infringement, the court did not address whether the Red Sole Mark is functional, nor any issue arising in the likelihood of consumer confusion.30 YSL’s monochromatic shoes, therefore, are in the clear.
This decision expands the Second Circuit’s interpretation of the Supreme Court’s holding in Qualitex, extending the limited registration of colors to fashion. Given a showing of secondary meaning, companies will still be able to register colors in some applications. Courts will allow a company to acquire protection for a color only if it “identif[ies] the source of the product rather than the product itself.”31
The lesson learned from Louboutin is that when it comes to aesthetics, a single color can indeed serve as a trademark, even in fashion. For Louboutin itself, however, it will have to settle for its contrasting soles. For now.
14Specific cases addressing color include: In Re Owens-Corning Fiberglass Corp., 774 F.2d 1116 (Fed. Cir. 1985) (allowing Owens-Corning to trademark the color pink with respect to fiberglass); Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 115 S.Ct. 1300 (1995) (granting Qualitex trademark protection for a green-gold color used on dry cleaning pads); Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527 (Fed. Cir. 1994) (holding black functional as applied to outboard motors due to competitors’ needs for use).
26Louboutin, 2012 WL 383225 at *12 (“We see no reason why a single-color mark in the specific context of the fashion industry could not acquire secondary meaning—and therefore serve as a brand or source identifier—if it is used so consistently and prominently by a particular designer that it becomes a symbol, ‘the primary significance’ of which is ‘to identify the source of the product rather than the product itself.’”) (citing Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 102 S.Ct. 2182, 72 L.Ed.2d 606 (1982)).