The Fight for Red: Fashion Statement or Protected Trademark? | Stark and Stark

Louboutin vs. YSL

Christian Louboutin (“Louboutin”), the designer of the famous red-soled shoes, filed a trademark infringement lawsuit against fashion house Yves Saint Laurent (YSL), alleging that YSL infringed on its trademark for red soles (“The Brand of Red soles”), selling a monochrome shoe that was all red, including a red insole, heel, upper, and outsole. YSL countersued to invalidate Louboutin’s Red Sole trademark, arguing that it was decorative rather than distinctive and purely functional.

After investing considerable time, money and effort in building a brand based on recognizable red soles in women’s haute couture shoes, Louboutin sought and obtained federal trademark registration for its red sole, which became indicative of Louboutin shoes. The red branding on the sole consists of a lacquered red shoe sole. A few years later, YSL released a new line of monochrome shoes in different colors, including red. Monochrome shoes have the same color throughout the shoe. Unsatisfied with the contestant’s use of a “red sole,” Louboutin sued YSL in the United States District Court for the Southern District of New York and sought a preliminary injunction. In denying the motion for an injunction, the District Court found that Louboutin was unlikely to succeed on its infringement claim because the Red Sole mark was unenforceable due to the fact that monochrome marks in fashion are functional in nature. The court ruled that a color can never serve as a trademark in the fashion industry. Such a one According to the rule was rejected by the Second Court of Appeals, which held that a color may be entitled to trademark protection if it acquires a secondary meaning and consumers come to recognize that color used on the goods or packaging as identifying the source or manufacturer of the products. As the Supreme Court said:

Over time, customers may come to treat a certain color on a product or its packaging (say, a color that in context seems unusual, such as pink on a company’s insulation material or red on the head of a large industrial bolt), as a brand designation. And if so, that color would identify and distinguish the goods-i.e., “to indicate” their “source” – much in the way that descriptive words on a product . . . can indicate the origin of the product.

[Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 163 (1995).]

According to Qualitex, a case involving a claim for trademark protection of the color of a dry cleaning press pad, only the color can be protected as a trademark if it serves no other important function. The functionality of a mark is analyzed from two perspectives: (1) traditional “utilitarian” functionality, which considers whether the mark is (i) essential to the use or purpose of the article, or whether (ii) “affects the price or quality of the article; and “aesthetic” functionality where the protection of the mark significantly undermines the ability of competitors to compete in the relevant market. Both forms of functionality serve as affirmative defenses to a trademark infringement claim.

A mark is functional in a utilitarian sense if it is essential to the use of the article or if it affects the price of the article. Furthermore, if the aesthetic design of the product is the mark itself, that mark may be considered functional if granting the exclusive right to the mark owner would create a significant disadvantage for competitors. For example in Johnson & Johnson v Actavis Group HF the plaintiff, Johnson & Johnson, sued to enforce its Gold Mark, the color used on the packaging of the antibiotic NEOSPORIN ointment. The court looked at the functionality of the Gold Mark to determine whether the green/yellow color would significantly impede competition for other antibiotic ointments. Finding that this was not the case, the court concluded that various other colors were used in the packaging of similar products and the defendants could not prove that the inability to use a gold color put competitors at a disadvantage.

Turning to the red bottom shoes, the Second Circuit court did not reach the functionality defense arguments because it found that Louboutin’s Red Sole offered protection only in the case of contrasting shoe color. This means that the lacquered red sole applied to a shoe with a different colored “upper” has become secondary in identifying and distinguishing the Louboutin brand. As such, the distinctive symbol that qualifies for trademark protection is the red bottom of a shoe with a different color, such as black.

Accordingly, the appeals court affirmed the denial of the preliminary injunction, finding that YSL’s solid red shoes did not infringe Louboutin’s Red Sole mark because YSL’s shoes were red throughout and did not use the red sole on a different color shoe.

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