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).