Single color trademarks are registerable, protectable, and enforceable. So held the Second Circuit in its long awaited decision in the Christian Louboutin SA v. Yves Saint Laurent America Holding Inc. case. In doing so, the Second Circuit rejected the District Court’s finding that Christian Louboutin’s trademark on red-soled shoes may be invalid in itself and that single color trademarks in the fashion context were unenforceable. In light of the fact that the District Court was inclined to cancel Louboutin’s registration, the Second Circuit’s decision represents a victory for Louboutin and other designers, as well as purveyors of any goods or services that seek to utilize upon a single color as a trademark.
In 1998, Christian Louboutin applied for a trademark for use in connection with women’s high fashion designer footwear. The mark “consist[ed] of a lacquered red sole on footwear.” Louboutin’s mark went on to become famous in the fashion industry, and in 2008 the Patent and Trademark Office issued a registration (No. 3,361,597) for the lacquered red soles.
In 2011, YSL debuted four new shoe designs that included a bright red sole as part of a monochromatic design consisting of an entirely red shoe. Louboutin sued YSL, alleging trademark infringement, false designation of origin, and dilution. In denying Louboutin’s request for an injunction and granting YSL’s motion for summary judgment, the District Court held that a single color could never constitute an enforceable trademark in the fashion industry. The Court found that in the fashion industry, colors are “essential to the use or purpose of the article” and affect the “cost or quality of the article.” Therefore, it reasoned, such trademarks are automatically “functional” and thus ineligible for trademark protection. Some worried that the District Court’s holding called into question the validity of color trademarks in general.
The Second Circuit overturned the District Court’s holding that barred a single color serving as a trademark in the fashion industry. Citing a prior Supreme Court opinion on the subject, Qualitex Co. v. Jacobson, 514 U.S. 159, 34 USPQ2d 1161 (1995), the Court explained that “the Supreme Court specifically forbade the implementation of a per se rule that would deny protection for the use of a single color as a trademark in a particular industrial context.” See Opinion. The Second Circuit did explain that a single color almost never would be inherently distinctive, and therefore could only become a trademark if it acquired secondary meaning. The Court also rejected the District Court’s suggestion of a fashion industry specific rule.
Turning to Louboutin’s mark, which consists of a product design, the Second Circuit next analyzed the traditional secondary meaning factors—including exclusivity of use, advertising, unsolicited media coverage, and sales success— to determine whether Louboutin’s red sole mark had achieved secondary meaning. Noting Louboutin’s evidence of substantial and exclusive use of the red lacquered sole and that consumers clearly recognized such shoes as originating from Louboutin, the Second Circuit ultimately found the existence of secondary meaning and thus found that Louboutin’s mark was protectable.
Consistent with its secondary meaning analysis, the Court restricted Louboutin’s trademark to those shoes in which the remainder of the shoe was a different color than the red lacquered sole. This was because, among other things, there was no evidence of secondary meaning where the top of the shoe did not contrast with the sole. This is not surprising: Louboutin has become known worldwide for his pop of color that comes from a contrasting upper.
While Louboutin could not enjoin YSL’s sales of monochromatic red shoes, the case is important for designers and others that seek to use a single color as a trademark: it ensures that a source of identification will continue to maintain the benefits of trademark law.
The case is Christian Louboutin SA v. Yves Saint Laurent America Holding Inc., case number 11-3303, in the U.S. Court of Appeals for the Second Circuit.