How Strong is Your Trademark? – The Red Shoe Sole Design Saga

On August 10, 2011, the U.S. District Court for the Southern District of New York denied Christian Louboutin's motion to stop Yves Saint Laurent's ("YSL") use of red soles on their shoes, claiming infringement of its trademark. However, the Court denied that preliminary injunction motion and stated instead that Louboutin's red soles may not be entitled to trademark protection at all.

Louboutin shoes are known for their red soles. On January 1, 2008, the US Patent and Trademark Office granted Louboutin a corresponding trademark (Registration No. 3,361,597) for the women's high fashion designer footwear with lacquered red soles. In January 2011, Louboutin claimed that YSL was using the same or confusingly similar shade of red on the soles of its shoes in its Cruise 2011 collection. In fact, YSL's shoes were either all red, including the soles, or blue, or yellow. An all-red version had previously appeared in YSL's Cruise 2008 collection. Louboutin filed a lawsuit against YSL claiming trademark infringement, among other claims. YSL counterclaimed seeking cancellation of the Red Sole Mark because it is functional, ornamental, not distinctive, and was secured by fraud on the USPTO.

To succeed in its claim of trademark infringement, Louboutin has to show that its Red Sole Mark merits protection and YSL's use of the same or similar mark is likely to confuse the consumers as to the origin of the shoes. Typically, in the fashion industry, courts have upheld the trademark registration for colors that appear in distinct patterns or combinations of shades that "manifest a conscious effort to design a uniquely identifiable mark embedded in the goods." See Opinion at p. 12. For example, Louis Vitton has trademarked an LV monogram combined in a pattern of rows with 33 bright colors, and Burberry registered its check pattern. On the other hand, use of a single color has been held by the courts to be functional (functionality is defined by courts as a feature that would put the competitor at a disadvantage because it is "essential to the use or purpose of the article" or "affects its cost or quality.") Looking at the use of red on Louboutin's shoe soles, the Court noted Louboutin's own words that his shoe styles give "energy", they are "engaging", red is "sexy" and it "attracts men to women who wear my shoes." Also, red lacquered sole adds to the cost of the shoes. Further, the Court noted that granting one designer monopoly on the color red would hinder competition especially in the fashion industry that is so dependent on colors.

The Court concluded that it has "serious doubts that Louboutin possesses a protectable mark" and that it was unlikely to success in its infringement case.

This is just the beginning of the battle, as the decision of the Court can (and most likely will) be appealed to the U.S. Court of Appeals for the Second Circuit. However, it seems that the battle launched by Louboutin against YSL for trademark infringement is turning into the battle for Louboutin to keep its red sole trademark.

Read more commentary from Arina Shulga on the legal aspects of operating new and growing businesses at Business Law Post.

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