Louboutin is undoubtedly one of the most recognized high-end fashion brands out there. They’re known for the red soles on the bottom of their shoes, which have become an iconic mark for the brand itself. But the red soles have been the central issue in various lawsuits, including an important case for trademark law. The case addressing this issue was Christian Louboutin S.A. v. Yves Saint Laurent America Holdings, Inc.
Yves Saint Laurent (YSL) is another high-end fashion brand that produced a line of monochrome shoes. The monochrome shoe line included shoes that were red from top to bottom and included a red outsole. Louboutin alleged that these YSL monochrome shoes infringed on their trademark of red soled shoes. Thus, the issue in the case 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 case went all the way up to the Court of Appeals for the Second Circuit.
Trademark infringement is generally found when there is a protectable trademark and another party uses the same or similar trademark that is likely to cause confusion as to the source. Louboutin’s red sole more or less qualifies for trade-dress protection under trademark law, where the mark is generally some physical part of the product itself. Often times, secondary meaning must be established before the feature can qualify for trade-dress protection.
The Court’s Reasoning
In many cases, the trademark’s validity must first be established. In this case, the Court stated that “[w]e 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.” Thus, the red soles were found to be a protectable trademark. But the Court further stated that “Louboutin has not established secondary meaning in an application of a red sole to a red shoe, but only where the red sole contrasts with the ‘upper’ of the shoe. The use of a red lacquer on the outsole of a red shoe of the same color is not a use of the Red Sole Mark.” The extent of the Louboutin’s Red Sole Mark was limited “to a red lacquered outsole that contrasts with the color of the adjoining upper.”
Why is this significant
Having a trademark over a single color is significant, especially in the fashion industry. Being the sole producer of a certain type of article gives a producer a huge advantage. Just imagine the consequences if the court did not limit the scope of Louboutin’s trademark: if the court had not limited the scope to only the red outsoles, Louboutin could have possibly been the only producer of entirely red shoes AND red soled shoes. This would limit the competition and may allow Louboutin to dictate prices for entirely red shoes.
Louboutin’s red sole isn’t protected everywhere around the world.
Louboutin’s red sole is not protected in certain parts of the world. Generally, legal rights, including intellectual property rights, are limited to a certain territory. For example, a trademark that has protection in America may not be protected in France. That trademark must also be registered and recognized under French law before it can be protected in France. This generally applies unless the trademark is given international trademark rights due to certain international agreements or other circumstances. Louboutin’s trademark rights to red soles were questioned in certain parts of Europe.
Click here to read more about Louboutin’s international lawsuit and their international trademark rights.
But giving trademark protection to certain colors may be beneficial
Giving a single party the exclusive right to use a mark or color is beneficial even though it may seem like it’s preempting a field. When you see red sole shoes, you immediately know that they’re Louboutins. You know they’re high quality and you know what to expect. Trademarks and trade-dress protection assist the consumer in determining from the get go what they’re getting. Everything is so much easier for the consumer when they can immediately distinguish one product from another.
How would something qualify for trade dress protection in the first place?
As stated before, secondary meaning is often required before something can qualify for trade-dress protection. The Trademark Manual for Examining Procedures (TMEP) explicitly state that “[c]olor marks are never inherently distinctive.” This would mean that colors cannot get trademark protection right away. Attaining secondary meaning may require that consumers associate the product with the source itself rather than just the product itself. Moreover, the color can’t be functional. Establishing all the requirements for trade-dress is no easy feat and the TMEP specifically says that “[t]he burden of proving that a color mark has acquired distinctiveness is substantial.”
Click here to read more about the TMEP and colors as trademarks.
What are your thoughts on Louboutin’s trade dress protection for the red sole? What about the Court’s ruling in the case?
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Disclaimer: This article is not legal advice. It is only for educational or entertainment purposes only. Please do not use the article or contents of the article without permission. For legal advice and questions, please contact registered Patent Attorney Vincent LoTempio.