The U.S. District Court for the Southern District of New York’s August 10, 2011 decision in Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., questions whether a single color may serve as a trademark for fashion. That case arises from an action for trademark infringement brought by luxury shoe designer, Christian Louboutin, against Yves Saint Laurent America (“YSL”). Louboutin is well-known for his collection of high end women’s shoes, which have bright red glossy soles. He also owns U.S. Trademark Registration No. 3,361,597, which is described in the registration certificate as “a lacquered red sole on footwear.”
The action alleged, among other things, that YSL’s sale of four shoe designs that are entirely red, with a red sole, including YSL’s Trib Too shoe, were likely to confuse consumers as to the source of the YSL shoes, in violation of Louboutin’s trademark rights. In the August 10, 2011 decision, Judge Victor Marrero denied Louboutin’s motion for preliminary injunction, finding that Louboutin was unlikely to be able to establish that he had a protectable mark, since color cannot serve as a trademark if it is functional.
In its decision, the court recognized the cachet of Louboutin’s red soles, noting that “[w]hen Hollywood starlets cross red carpets and high fashion models strut down runways, and heads turn and eyes drop to the celebrities’ feet, lacquered red outsoles on high-heeled, black shoes flaunt a glamorous statement that pops out at once. For those in the know, cognitive bulbs instantly flash to associate: ‘Louboutin.’” Neither party disputed that Louboutin’s red soles were distinctive, or that they were associated with Louboutin’s high-end footwear brand. The court’s decision turned on its finding that a single color is unlikely to be protectable as applied to fashion.
Nonetheless, Louboutin’s assertion of trademark rights in a color is not a new or novel concept. The United States Supreme Court in Qualitex Co. v. Jacobson Products Co. held that a product’s color can become indicative of source and serve as a protectable trademark after the color obtains sufficient notoriety (or “secondary meaning”) among consumers. However, the law is clear that color cannot be protected as a trademark if its use is functional in nature, such as by being essential to the use or purpose of the product, or affecting the cost or quality of the product. Qualitex v. Jacobson, 514 U.S. 159, 165-66 (1995).
The courts and the Trademark Office have found a number of color marks to merit protection, including Burberry’s tartan for clothing and Tiffany’s robin’s egg blue for jewelry and other goods. However, federal trademark protection has been denied for numerous marks on the basis of functionality, including the color pink for surgical wound dressings, green for fishing rods, and white for cutlery handles. In Louboutin, the court opined that “there is something unique about the fashion world that militates against extending trademark protection to a single color, although such registrations have sometimes been upheld in other industries.” The court also listed a number of possible functions that Louboutin’s red heels arguably may serve, including to “attract men to the women who wear [the] shoes” and to coordinate with clothing colors.
Ultimately, the court found that Louboutin was unlikely to prevail in establishing that he has a valid, protectable trademark, and denied the motion for preliminary injunction. This holding has the potential to impact not only the fashion industry, but any industry where the color of a product would be considered to contribute “expressive, ornamental and aesthetic” functions. Developments in this case will continue to be closely watched.