THE “BATTLE FOR SOLES” HAS BEEN WON…BY ALL?
September 5, 2012, the 2nd Circuit Court of Appeals came to a decision regarding one of the most closely watched cases in trademark law, Christian Louboutin v. Yves Saint Laurent. The Court of Appeals reversed the lower court decision which stated that a single color could not be trademarked in the fashion industry. The 2nd Circuit’s treatment has been eagerly awaited by prominent fashion industry brands, such as Tiffany & Co. who, like Louboutin, rely on color as predominant source identifier for their brand. Since 1992, French fashion designer, Christian Louboutin, has painted the “outsoles” of his high end women’s heels with a high gloss red lacquer. This red lacquered outsole soon became a trademark of the coveted Louboutin shoes, and thus of the Louboutin brand. In 2008, Louboutin registered his red lacquered outsole with the United States Patent and Trademark Office as a design mark (U.S. Reg. 3,361,597). Things became heated when Yves Saint Laurent (YSL), fashion rival to Louboutin, began selling a monochromatic red pump (read—red outsoles), thus the battle of soles began.
The big money question presented by this case was whether “a single color may serve as a legally protected trademark in the fashion industry.” Turns out it can. The 2nd Circuit concluded that Louboutin’s red outsole mark has acquired limited secondary meaning—i.e., over time it became a distinctive symbol identifying the exclusive Louboutin brand.
Trademark protection for single colors is not a novel concept. Single colors have been granted protection under trademark law in various other industries, such as pink for insulation and green for laundry pads. In the fashion industry, however, courts and legal experts have argued that color should not be eligible for trademark protection since it may be considered as essential to the use and purpose of apparel, thus falling under the contested standard of aesthetic functionality. In light of the 2nd Circuit’s decision, however, fashion brands and design houses can breathe a bit easier knowing they are entitled to the same standards of trademark protection as other industries. While the 2nd Circuit’s decision is a major nod to Louboutin, YSL didn’t walk away empty handed. The court limited Louboutin’s trademark to “uses in which the red outsole contrasts with the color of the remainder of the shoes.” Therefore, since YSL’s use of a red sole was part of a monochrome red shoe, YSL is cleared to continue selling its monochrome red shoes; legal compromise at its finest. Photo by Arroser (Own work) [CC-BY-SA-3.0 (http://creativecommons.org/licenses/by-sa/3.0)], via Wikimedia Commons.
