Red M&Ms, red Crayolas red Porsches - let's hope they
never end. But what about the famous red shoe battle between designers Christian
Louboutin and Yves Saint Laurent? You thought there was an end to that red
You might be wrong.
As reported by Law360, the USPTO recently denied
Louboutin's proposed modifications to its red-soled shoes trademark.
Last year, the Second Circuit rejected, as inconsistent with
Supreme Court precedent, a lower court's decision that a single color could
never serve as a trademark in the fashion industry [enhanced
version available to lexis.com subscribers].
"Louboutin's trademark," the Second Circuit held, "consisting
of a red, lacquered outsole on a high fashion woman's shoe, has acquired
limited 'secondary meaning' as a distinctive symbol that identifies the
Louboutin's trademark was limited to uses in which the red
outsole contrasts with the color of the remainder of the shoe. The trademark,
as thus modified, was entitled to trademark protection. The Second
Circuit refused to uphold the protection of red lacquered outsoles in all
"We ... instruct the Director of the Patent and Trade Office
to limit the registration of the Red Sole Mark to only those situations in
which the red lacquered outsole contrasts in color with the adjoining 'upper'
of the shoe," the court ordered.
Law360 reports that Louboutin objected to, while Saint
Laurent supported, the USPTO's proposed new language for the trademark. Louboutin
offered alternate language in hopes of broadening its protection, but the USPTO
rejected that language on January 16th.
The Second Circuit has set a Feb. 1 deadline for restoring
its jurisdiction to resolve any remaining arguments.
Sign in with your Lexis.com ID to access Trademark Law resources on Lexis.com or any of these
Mathew Bender Trademark Law publications:
Click here to order Trademark Law
treatises/resources and Mathew Bender publications.
View the LexisNexis
Catalog of Legal and Professional Publications
here for a list of available LexisNexis eBooks.
Click here to learn more about
For more information about LexisNexis products and solutions connect with us through our corporate site.