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Can You Trademark a Single Color?

11 Oct, 2012 By: Arthur Yoon, Jeffrey Richter


A federal appellate court resolved a lawsuit (Christian Louboutin S.A. v. Yves Saint Laurent America Holding Inc.) between French fashion powerhouses Christian Louboutin and Yves Saint Laurent (YSL), deciding whether a single color may serve as a legally protected trademark in the fashion industry. The suit between the two companies, that both specialize in high-end leather goods, began in 2011 when Louboutin discovered YSL’s plans to sell a monochrome red shoe with a red sole.

In 1992, Louboutin began painting a high-gloss red lacquer on the upper sole of its women’s high-heel shoes. The lacquered red sole, which is widely recognizable to customers of women’s high-fashion footwear, was designed to contrast with the color on the rest of the shoe, and was granted a trademark in the use of this color on its shoes by the U.S. Patent and Trademark Office (USPTO) in January 2008. Upon discovering YSL’s plans, Louboutin requested the competing designer to remove its shoes from the market. YSL refused, and Louboutin filed suit for trademark infringement. YSL counterclaimed, arguing Louboutin’s mark should be cancelled because the red sole mark was not distinctive, but rather merely ornamental or functional.

The court found the red sole mark valid. First, the court recognized that Louboutin acquired a registered trademark from the USPTO, which meant that the mark is presumed to be valid and that Louboutin has an exclusive right to use the mark in commerce. Second, although the court found that single colors could not be inherently distinctive, it held that Louboutin’s use of the high-gloss lacquer red in conjunction with a contrasting color on the rest of the shoe allowed the red color to acquire a secondary meaning as a distinctive symbol that identifies the Louboutin brand.

Under trademark law doctrine, “secondary meaning” is acquired when in the minds of the public the primary significance of a product feature is to identify the source of the product rather than the product itself. The court referenced evidence showing that Louboutin originated the red sole mark more than 20 years ago and had invested substantial amounts in promoting it as its signature in high-end women’s footwear. The court pointed to an admission from the CEO of YSL’s parent company that “in the fashion or luxury world, it is absolutely clear that we recognize the notoriety of the distinctive signature constituted by the red sole of Louboutin models.”

However, because the court wanted to ensure that granting the red sole mark would not significantly hinder competition in the fashion market, it held the mark invalid to the extent it precluded competitors use of a red outsole in all situations. As such, the court limited the Louboutin trademark to only where the red sole actually contrasts with the upper portion of the shoe. Because the trademark claim was thus narrowed, the court held that the YSL shoe, which contained the same red color all over the shoe, could not infringe on the limited but valid Louboutin mark. In an unusual outcome for a trademark lawsuit, the plaintiff and defendant both “won”: Louboutin got to keep and enforce its trademark and YSL successfully defended itself against a claim of infringement.

A court can limit trademark law protection when it considers the public’s right to a vigorously competitive market. The Louboutin case, nevertheless, demonstrates the breadth of trademark law protection by showing that the use of a single color may attain a secondary meaning protectable by trademark law if it is used as a distinctive quality that moves the public to buy the product because of its source, even in the fashion industry where the need by its participants to freely use colors is an essential function of product designs and features.

Jeffrey Richter and Arthur Yoon are partners at Los Angeles-based Finestone & Richter. They can be reached at (310) 575-0800, or at jrichter@frlawcorp.com and ayoon@frlawcorp.com.
 


About the Author: Arthur Yoon


About the Author: Jeffrey Richter


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