Red-Letter Day: Registering a Trademark for Red Soled Shoes

trademark-applicationTrademark cases raise lots of interesting legal issues.  Sometimes they also simply raise interesting stories.  Everyone is a consumer in one form or another, so we usually connect with or have an interest in the issues being litigated.  And there are many wild ideas for registering a trademark. For example, a recent court case having the flair of InStyle or People Magazine involves a fight between two high fashion designers over color and incredibly expensive shoe styles.  The case raises an interesting trademark issue and leaves one to wonder how crazy the outfits worn to court were.

Christian Louboutin got the idea to color the soles on his line of designer shoes red when he painted red nail polish on the black soles of a pair of women’s shoes. He liked the “pop” that the red soles gave his shoes and a distinctive new look was born. He or his trademark lawyer also apparently had the idea of registering a trademark for the red soled shoes. The U.S. Patent and Trademark office granted Louboutin a trademark registration covering the red soles in 2008. The U.S. Appeals Court for the Second Circuit recently reaffirmed that this distinctive sole color was worthy of trademark protection. The Louboutin trademark red sole had been under attack from another designer Yves Saint Laurent . Yves Saint Laurent has been producing an all red shoe that included a red sole. Louboutin claimed the red sole infringed upon their unique look and caused consumer confusion.

In the first stage of the case, the U.S. District Court ruled that one color could never serve as a fashion brand trademark, even though Louboutin was granted a trademark registration for such protection in 2008 by the U.S. Trademark Office. The Second Circuit Court of Appeals rejected that argument and said that Louboutin was allowed to protect its brand against red-soled shoes, but limited such protection “to uses in which the red outsole contrasts with the color of the rest of the shoe.” In other word, Yves Saint Laurent’s all red shoe did not infringe upon Louboutin’s mark because it is the contrast between the red sole and the other colors of the shoe that provide the distinct look. The decision was somewhat of a victory for both parties. Yves Saint Laurent can continue selling its all red shoe and Louboutin can continue to protect its red soles. Trademark lawyers on both sides are probably bragging that the Court’s decision should be designated a red-letter day.

The Louboutin case reaffirms that color may function as a source identifier and consequently have associated trademark rights. The Supreme Court held in the 1995 case of Qualitex Co. v. Jacobson Products Co. that the green-gold color of a dry cleaning press pad could function as a trademark. Before this decision, the argument was often made that registering a trademark for color alone should not be permitted, since granting trademark status to colors would soon lead to the depletion of the number of colors available to competitors for a product. This is why courts try to balance protecting color as a trademark and limiting the scope of such protection.

A company may use color to create an identifiable image in the mind of consumers, as Louboutin did with his red soles. When a consumer sees a red soled shoe, he or she will likely associate it with the Louboutin brand. Trademark law serves to protect such an image. One exception to be aware of is if the color serves as a functional part of the product outside of acting as a source identifier. For example, if Louboutin’s red sole was necessary for the function of the shoe then it is unlikely registering a trademark for Louboutin’s red soled shoe would have been permitted.

If you are interested in protecting a color scheme as part of your brand, you should consult a good trademark lawyer who can help you prepare a trademark strategy that will best protect your brand and improve your changes of obtaining trademark protection of your color scheme.

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