Red Soles, Yes, a Trademark

October 3, 2012

Louboutin’s bright red soles are protectable per the 2nd US Circuit Court of Appeals in New York which held, the red soles were a “distinctive symbol that qualifies for trademark protection”.

Louboutin quickly filed a suit agains Yves Saint Laurent when it unveiled shoes with red soles.  The shoes in question also had a matching red upper.  In it’s original suit Louboutin was denied proteciton, with the court holding: “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 that it seeks.

However, “Color alone “ sometimes ” may be protectable as a trademark, “where that color has attained ‘secondary meaning’ and therefore identifies and distinguishes a particular brand (and thus indicates its ‘source’).”

The NY Court of Appeals reversed the decision, holding the Louboutin’s red soles are distinctive and have developed a secondary meaning.  In an interesting twist, the court held that while red soles with different colored uppers were protectable marks, red soles with red uppers were not.

Judge Cabranes wrote that it was “the contrast between the sole and the upper that causes the sole to ‘pop’ and to distinguish its creator.”

The ruling has interesting ramification for for Single-Color Marks and the Aesthetic Functionality Doctrine which we will discuss in further detail in a subsequent post.

Louboutin S.A. v. Yves Saint Laurent Am., Inc., 778 F. Supp. 2d 445 (S.D.N.Y. 2011).


Changes to Acceptable Identification of Goods and Services Manual (ID Manual) On Their Way

The USPTO recently held a roundtable regarding the Acceptable Identification of Goods and Services Manual (ID Manual).  Relatively unchanged for a number of years, the ID Manual is set to undergo structural and content changes in the future.  This should make it easier to locate matching good/services categories and reduce the dependancies of more expensive custom drafted descriptors.  Per the USPTO:

The roundtable discussion focused on the following issues related to identification and classification of goods and services:

•       The USPTO’s Acceptable Identification of Goods and Services Manual (ID Manual):  The USPTO plans to redesign the ID Manual to better meet user needs and we are seeking suggestions regarding desirable features and content for the Manual.  We are also seeking feedback on whether presenting the ID Manual in a hierarchical format using a drop-down list, where identifications are organized by general categories that are then divided into more specific categories, would be useful.                                                                                                                    

•       The USPTO’s practice regarding the level of specificity required in describing goods and services:  The USPTO seeks user feedback on whether modification of current practice is desirable.  For example, rather than requiring a list of individual clothing items, should the USPTO accept a more general description of a category of clothing, such as “casual wear” or “sportswear”?  

•       Collaboration with industry groups:  The USPTO would like to discuss the possibility of creating ongoing working relationships with key industries to ensure that the USPTO ID Manual is promptly updated with new products and services, and contains comprehensive lists of the most common goods and services in each industry.

•       International databases of acceptable identifications of goods and services:  Efforts are underway to develop a harmonized list of identifications that all participating countries or international organizations accept, and also to create a non-harmonized list of identifications with an indication of which countries or international organizations accept each listed item.  The USPTO seeks user input on the potential value of these projects to trademark owners who seek registration in multiple jurisdictions. 

Apple TM Application for Music Mark Rejected

In a recent appeal decision by the Trademark Trial and Appeal Board, Apple was denied a trademark of it’s iOS5 and iOS6 applicaiton icon for music.  The TTAB held that the mark was too similar to a mark held by the now defunct company of iLike.

The TTAB held in its decision: “In comparing the marks within the above-noted legal parameters, the marks at issue are similar because they comprise a double musical note in an orange rectangle.”

Apple argued that there was no likelihood of consumer confusion as numerous other marks had been registered similar to iLike’s 2008 trademark.

The marks in question are:

The full decision may be read here:Apple Ttab

Topics Requested

June 25, 2012

As our new site comes online, we strive to add new, novel, and interesting articles on trademarks, service marks, and copyrights.  However, if you have a question and would like to share, please contact us and we would be happy to research and draft articles for all to share on our site.