Color trademarks - are they protectable in the fashion industry?

Christian Louboutin, a French shoe designer, is well known for his luxurious collections of women's high heel shoes with bright red outsoles. Inspired by a bottle of red nail polish that he saw in the 90s, these sexy red-soled stilettos have become a necessity in every woman's closet, or at least to those who can afford the costly price tag. Featured in movies and worn by celebrities all over the world, these red-soled heels are generally associated with the designer Louboutin. However, with all this fame and recognition, what intellectual property protections are afforded to these fashionable heels? What about protection for distinctively-styled shoes and clothing in the fashion industry in general? Can Louboutin stop other fashion designers or third parties from manufacturing and selling footwear with red soles? According to a recent decision by the U.S. District Court of the Southern District of New York, he can't.

Red-Soled Shoes Lawsuit

In the United States, trademarks are available not just for verbal designations of origin (such as “Coke”), or stylized versions thereof (such as the familiar Coca-Cola script logo), but for non-verbal indicators of a unique origin (such as Target's red dot in a circle). It is also established that colors can sometimes be a unique and trademark-eligible designation of origin, as for instance in the case of In re Owens-Corning Fiberglas Corp., 774 F.2d 1116 (Fed. Cir. 1985), which established that the color pink had attained trademark-protectable status for designating fiber glass insulation provided by Owens Corning. See also Qualitex Co. v. Jacobson Prods., 514 U.S. 159, 173 (1995) (upholding use of green-gold color of manufacturer's dry cleaning press pads as a registered trademark); Unique Sports Prods., Inc. v. Ferrari Importing Co., 2011 WL 5156798 (N.D. Ga. 2011) (upholding the use of a light blue color grip tape for sports rackets as a registered trademark).

In 2008, Louboutin obtained a U.S. trademark registration on his “lacquered red sole” to be used in connection with “women's high fashion designer footwear.” Thereafter, in April 2011, Louboutin filed a lawsuit against Yves Saint Laurent America, Inc., a fashion powerhouse, to prevent YSL from selling the red-soled shoes offered in its 2011 collection. Asserting a claim of trademark infringement under the Lanham Act, as well as related state and federal law claims against YSL, Louboutin alleged that four of the shoe designs featured in YSL's collection utilized the same or a confusingly similar shade of red as that protected by Louboutin's Red Sole Mark. YSL responded to Louboutin's claims by asserting a number of counterclaims, including a request to cancel the Red Sole Mark based on various grounds. (Notably, this is not the first time that Louboutin has sought to enforce his Red Sole Mark. However, this is the first time that his opponent has fought back).

In June 2011, Louboutin filed a motion for preliminary injunction seeking to prevent YSL from marketing and selling the allegedly infringing red-soled shoes during the pendency of the lawsuit. The district court denied Louboutin's motion for preliminary injunction in August 2011, reasoning that: “[b]ecause in the fashion industry color serves ornamental and aesthetic functions vital to robust competition, the Court finds that Louboutin is unlikely to be able to prove that its red outsole brand is entitled to trademark protection, even if it has gained enough public recognition in the market to have acquired secondary meaning.” Christian Louboutin S.A. v. Yves Saint Laurent Am., Inc., 778 F. Supp. 2d 445 (S.D.N.Y. 2011).

As the basis for its decision, the court cited and discussed the United States Supreme Court's holding in Qualitex Co. v. Jacobson Prods., 514 U.S. 159 (1995). In that case, the Supreme Court upheld the use of a green-gold color as a trademark on dry cleaning press pads and noted that color alone “may sometimes meet the basic legal requirements for use as a trademark” if: (1) the color has attained secondary meaning, i.e., it identifies and distinguishes a particular brand, thus indicating its source, and (2) is not functional, i.e., the color is not essential to the use or purpose of the product and does not affect the cost or quality of the product. Id. at 163-74.

Applying these principles, the district court noted that although a single color has been approved as a trademark for industrial products (e.g., the Owens Corning case), a monopoly over a single color in the fashion industry involves additional considerations given that color serves both to “identify sponsorship or source,” and “advance expressive, ornamental and aesthetic purposes.” The court went on to observe that while the Lanham Act has previously been applied as the basis for the proper use of a color as a trademark in the fashion industry, these cases are limited to marks that have “distinctive patters or combinations of shades,” as in the Burberry grid-like check pattern, and have not involved a single color applied to an article of clothing. See e.g., Burberry Ltd. v. Euro Moda, Inc., No. 08 Civ. 5781, 2009 WL 1675080, at *5 (S.D.N.Y. June 10, 2009) (registered Burberry check pattern accorded statutory presumption of validity); Louis Vuitton Malletier v. Dooney & Burke, Inc., 454 F.3d 108, 116 (2nd Cir. 2006) (trademark protection accorded to entwined “LV” initials with three designs and displayed in 33 colors). Thus, highlighting the similarities between fashion designers and painters, the court reasoned that just as painters should not be denied the right to use a particular color, neither should those in the fashion industry.

The Court finally concluded that the Red Sole Mark is functional because it is used to elicit, among other things, sex appeal, and to enhance the viable sales price of the shoes. The court further reasoned that enforcing the Red Sole Mark would significantly hinder competition in the designer shoe market given the broad nature of Louboutin's trademark registration and the potential that Louboutin could prevent others in the fashion industry from using any shade of red on the outsole of various types of designer footwear, e.g., flat shoes and wedges in addition to high heels.

Louboutin has appealed the district court's decision to the U.S. Court of Appeals for the Second Circuit. As one would expect, this appeal has generated significant press in the fashion industry. Even Tiffany & Co., the high fashion jewelry designer who owns multiple trademark registrations for its robin's-egg blue packaging, which is in its own right a distinctive branding tool, filed an amicus curiae brief with the Second Circuit, along with International Trademark Association (“INTA”), a nonprofit association that is devoted to the support and advancement of trademarks.