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Courts analyze trademark infringement claims in two stages. First, the court looks to see whether a plaintiff's mark merits protection. In order for a trademark to be protectable, the mark must be "distinctive" and not "generic." Even a mark that is not inherently distinctive may nonetheless "acquire" distinctiveness by developing "secondary meaning" in the public mind. A mark has acquired "secondary meaning" when, the primary significance of a product feature is to identify the source of the product rather than the product itself.
Plaintiff fashion designer sought a preliminary injunction against its competitor for alleged infringement of the designer's trademark consisting of a red, lacquered outsole on a high fashion woman's shoe ("Red Sole" Mark -- a red sole on a shoe of a different color). The District Court found that the designer's trademark was likely not enforceable. The case was appealed.
Is the “red sole” mark entitled to trademark protection?
Although the court denied the preliminary injunction to enjoin the use of red lacquered outsoles in all situations was affirmed, but the Court recognized the trademark protection the designer was entitled to in the use of contrasting red lacquered outsoles. The trademark was limited to uses in which the red outsole contrasted with the remainder of the shoe. The Court explained that color could be trademarked if it acted as a symbol distinguishing a firm's goods and identifying their source, without serving any other significant function. In the fashion industry, color could serve as a tool in the designer's palette, rather than as mere ornamentation. The Red Sole Mark had acquired secondary meaning — and thus the requisite "distinctness" — when used as a red outsole contrasting with the remainder of the shoe. It was used so consistently and prominently by the designer that it had become a symbol, "the primary significance" of which was "to identify the source of the product rather than the product itself." By placing the color red in a context that seemed unusual, and deliberately tying that color to his product, the designer created an identifying mark firmly associated with his brand. The lacquered red outsole, on a shoe with a different colored "upper," had come to identify and distinguish the designer's brand; it qualified for trademark protection, but had to be modified as limited to the red sole on a shoe of a color other than red. The competitor's use of a red outsole on monochromatic red shoes did not infringe on the Red Sole Mark (as modified). The case was remanded for further proceedings with regard to the competitor's counterclaims.