• Cassandra L. Wilkinson

Seeing Red


I was once asked, “Why do you have so many pairs of shoes when you can only wear one pair at a time?” I admit, I do own more shoes than I probably need, as do most women; however, I find it very hard to resist the temptation to purchase that beautiful heel that would go so perfect with that dress that I have hanging in my closet. So, I purchase them, only to have them kill my feet, at which time they will commence to lay in their permanent new home, the back of my closet. I have never wanted to be “typical, archetypal, etc.” type of woman but, when it comes to shoes, I am just another statistic. Therefore, I was particularly interested in a court case that included one of my favorite shoes (which I admire from afar, since I have yet to purchase a pair of those gorgeous heels) by shoe designer Christian Louboutin. The recent court battle over his sought-after shoes has stirred up a lot of controversy.
THE SHOE
French shoe designer Christian Louboutin creates luxury footwear known for their distinctive materials and delicate embellishments. Donned by celebrities and paid tribute to by pop culture, his shoes are even the title subject of a song. The stiletto heels are fashion’s ultimate symbol of status and prosperity. Prices for a pair of these high end recognizable shoes range from $600 to approximately $4,600. They are recognizable by one thing: their hallmark red soles. The “lipstick red” shiny soles have appeared on virtually all Louboutin shoes since the company was founded in 1991. THE TRADEMARK
In 2008, Christian Louboutin SA obtained U.S. Trademark Registration No. 3361597 covering the mark LACQUERED RED SOLE. According to the trademark information obtained from the USPTO:
The Color(s) Claimed: The color(s) red is/are claimed as a feature of the mark.
Description of the Mark: The mark consists of a lacquered red sole on footwear. The dotted line is not part of the mark but are intended only show placement of the mark. LOUBOUTIN’S SUIT
In April of 2011, Louboutin sued Yves Saint Laurent (YSL) for trademark infringement after failed attempts to persuade YSL to pull its “red-soled 2011 cruise” footwear from stores. Louboutin’s claim was that YSL’s soles were “virtually identical” to Louboutin’s and could be confused with theirs. Louboutin asserted further that the Red Sole Mark has acquired distinctiveness based on sales and through media and pop culture recognition. Their lawyers requested a preliminary injunction against sales of the shoes, as well as damage of at least $1 million.
YVES SAINT LAURENT'S CASE
Yves Saint Laurent has responded to accusations that it copied Louboutin trademark red soles by asserting that the shoe designer does not have a monopoly on the color, stating:
These counterclaims arise from Louboutin's assertion of trademark rights that are based on fraudulently obtained, invalid trademark registrations (the “Contested Marks”). Louboutin claims to have the exclusive right to use red outsoles on women’s footwear – even on shoes, like all the YSL models challenged in this lawsuit, that are entirely red. Louboutin's attempt to monopolize the use of red outsoles – even to the extent of claiming that no other designer can make an all-red shoe – is unsupported by law, defies common sense and would unduly restrict the design options available to competitors in this market.
“Red outsoles are a commonly used ornamental design feature in footwear, dating as far back as the red shoes worn by King Louis XIV in the 1600s and the ruby red shoes that carried Dorothy home in The Wizard of Oz,” the court papers filed by YSL read.
YSL’s stance is that Louboutin should never have been issued the trademark “because it’s an ornamental design element that can enhance the aesthetic of footwear” and no designer should be allowed to monopolize a color. YSL acknowledges that Louboutin’s signature is the red sole shoe but contends that their shoe would not be confused with the Louboutin.
THE DECISION
In August of 2011, Judge Victor Marrero of the U.S. District Court for the Southern District of New York denied Louboutin’s motion for preliminary injunctions against YSL. In his decision he stated, “Because in the fashion industry color serves ornamental and aesthetic functions vital to robust competition, the Court finds that Louboutin is unlikely to be able to prove that its red outsole brand is entitled to trademark protection even if it has gained enough public recognition in the market to have acquired secondary meaning. The Court therefore concludes that Louboutin has not established a likelihood that it will succeed on its claims that YSL infringed the Red Sole Mark to warrant the relief it seeks.”
THE QUESTION
Can you trademark a color?
According to the United States Patent and Trademark Office's definition of a trademark, trademarks:
protect words, names, symbols, sounds, or colors that distinguish goods and services from those manufactured or sold by others and to indicate the source of the goods. Trademarks, unlike patents, can be renewed forever as long as they are being used in commerce.
In May of 1995, the Supreme Court ruled unanimously that color can be registered as a trademark when it distinguishes a particular product and serves no other function. The decision resolved a dispute amongst the lower Federal courts and upheld the longstanding position of the Patent and Trademark Office.
The key Supreme Court precedent in this area is Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995). In the opinion authored by Justice Breyer, the Court held “that there is no rule absolutely barring the use of color alone” as a trademark. Prior to this decision, the lower courts had split on the issue of whether color alone could serve as a trademark.
Under the Court’s ruling, a color must have acquired “secondary meaning” in order to be trademarked. “Secondary meaning” is a legal term that means a trademark that is not inherently distinctive becomes protected after developing a “secondary meaning”, i.e. great public recognition through long use and exposure in the marketplace.
THE CONCLUSION
In January of 2012, Louboutin challenged the ruling made by U.S. District Judge Victor Marrero to the U.S. Court of Appeals for the Second Circuit. Louboutin argued that the District Court's decision should be reversed and remanded because the District Court:
• Erred by misconstructing the Red Outsole Mark, ignoring the statutory presumption of validity, and ignoring the burden of proof;
• Misapplied the test for functionality and aesthetic functionality; and
• Abused its discretion in denying Louboutin’s preliminary injunction motion.
In response to Louboutin’s appeal, YSL argued that the District Court's decision should be affirmed because:
• The District Court did not abuse its discretion in finding that Louboutin was unlikely to overcome YSL's functionality defense; and
• There are numerous alternate grounds for denying Louboutin’s preliminary injunction motion, including that Louboutin cannot show irreparable harm, fair use, and that Louboutin is unable to establish secondary meaning or consumer confusion.
Judge Marrero said he would “defer deciding whether to cancel Louboutin’s red sole trademark until the appeals court ruled on the injunction.”
What do you think? Can a color be trademarked? Should Christian Louboutin win his appeal? Should I purchase my first pair of Louboutins?
MY OPINION
Having a monopoly of any sort would not be something that I would support. However, I know that when I see someone wearing a pair of red soled shoes I automatically think that they are Louboutins.
It looks as if we will have to wait and see what the appeal courts decides, and I am sure that it will not be an easy decision.
After all:
What color box does Tiffany’s jewelry come in? What color are John Deere tractors? The tag on the pocket of a pair of Levi’s is what color? How about Tommy Hilfiger’s flag?
And, I DO support the idea a purchasing my first pair of Louboutins.

#Trademarks #NewCaseLaw

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