To ensure that courts give proper recognition to rights
conferred by trademark registrations under U.S. law and follow precedent
protecting trademarks that also have aesthetic attributes, the International
Trademark Association (INTA) filed an amicus brief on November 14, 2011 in a
widely-watched case involving Christian Louboutin's registered Red Sole
trademark for women's high-fashion designer footwear.
The case, Christian
Louboutin S.A. v. Yves Saint Laurent America Holding, Inc., filed in the U.S.
District Court for the Southern District of New York, centers on Louboutin's
claim that shoes Yves Saint Laurent produced entirely in red infringed and were
likely to dilute the Red Sole mark. INTA
believes that in denying Louboutin's motion for a preliminary injunction, the
District Court committed two key errors that, if uncorrected, could have
adverse consequences for brand owners and consumers alike, making it harder to
stop infringers and counterfeiters.
In its brief in Louboutin's appeal to the U.S. Court of
Appeals for the Second Circuit, INTA argued that the lower court disregarded
the registration's description of the mark as a "lacquered red sole,"
mischaracterizing it broadly as "the color red," and failed to presume it a
valid mark as the Lanham Trademark Act requires. INTA also argued that the court's analogy to
a "fanciful hypothetical" lawsuit by Picasso against Monet over the color blue
ignored a long history of precedent that marks are legally protected even if
consumers are also drawn to them for other reasons, like their aesthetic appeal
or to show allegiance to a team.
INTA's Brief: http://www.inta.org/Advocacy/Documents/INTALouboutinYSL.pdf
For further discussion of this case, see: Red
Shoes Made for Walking but Not Trademarking? International Trademark
Association Files Amicus Brief in Christian Louboutin/Yves Saint Laurent Red