As fashion week begins in New York, the Court of Appeals for the Second Circuit issued an important ruling [enhanced version available to lexis.com subscribers] that may help fashion creators in their efforts to obtain intellectual property protection for fashion design. The appeals court held that Christian Louboutin has a valid trademark in the red color used on the outsoles of its women''s high-heeled shoes, but limited its ruling to the shoes where the color of the soles contrasted with the upper part of the shoe. In other words, the appeals court refused to grant Louboutin protection for use of the color red in general on its products. The appeals court decision reverses the holding of a lower court that a single color can never be protected by trademark in the fashion industry. The appeals court ruled that it is possible for color to be protected as long as the use of the color is not functional. A product feature is functional if it is essential to the use or purpose of the fashion article or if it affects its cost or quality. And, even if a feature is not functional, it still will not be accorded trademark protection if exclusive ownership would have a significant impact on competition in the relevant market.Relying on U.S. Supreme Court precedent, the appeals court found that it is possible for a single color to achieve secondary meaning (i.e., serve as a source or brand identifier) and therefore be entitled to trademark protection. Here, evidence of Louboutin''s extensive use and promotion for twenty years, as well as consumer survey evidence, made clear to the court that it is the contrast between the color of the sole and the upper part of the shoe that caused the sole of the shoe to "pop" -- distinguishing the Louboutin shoes from those of its competitors. As a general rule, courts (as well as the United States Patent and Trademark Office) have been reluctant to accord trademark protection to colors. This decision demonstrates that it is possible for the use of color on a fashion item to achieve trademark status. Given the very limited scope of copyright protection for fashion items, this trademark ruling offers fashion designers and manufacturers an additional business and legal strategy. Designers and other owners of marks that feature a color or colors may want to consider taking steps to register these marks for trademark protection in the United States and elsewhere (as Louboutin did for its red outsole) and to take other steps to secure and protect potential trademark rights.If you have any questions about this decision, or other trademark issues, please contact Edward Rosenthal at 212.826.5524 or email@example.com, Mary Sotis at 212.705.4878 or firstname.lastname@example.org, Jean Voutsinas at 212.826.5597 or email@example.com, or any other member of the Trademark and Brand Management Group.
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