The red soles: color as trademark

goldTMFashion Alert: For those of you who like red shoes, I thought you might be interested in the outcome of a case involving red soles versus red shoes.

Designer Yves St. Laurent (YSL) introduced an all-red high fashion shoe. Designer Christian Louboutin objected on the basis of a valid trademark registration for a single color, namely red, for use on a portion of women’s high fashion designer footwear, namely the sole. In the District Court, the lawsuit was decided in favor of YSL on the basis that color could not be trademarked in connection with fashion products. This despite that the U.S. Trademark Office had issued a trademark registration in 2008 for a single color for a fashion product, which registration was ordered cancelled on the basis of aesthetic functionality.

Louboutin wasn’t satisfied with the lower court’s decision and appealed the decision. The Appeals Court reversed the lower court, acknowledging that Louboutin succeeded in proving the distinctiveness of the contrasting red sole, but failed to demonstrate distinctiveness when the sole does not contrast with the upper portion of the shoe.

Generally, if granting a registration to a single source would significantly undermine their competitors’ ability to compete in the relevant market and exclusive protection for a feature would put competitors at a significant non-reputation-related disadvantage, a trademark would not be granted. But, where a color is used in a renowned and source-identifying manner AND has no utilitarian functional purpose, exclusivity for a color may issue in the form of a trademark registration.

The Appeals Court’s decision was a shot of anti-anxiety medicine for many trademark owners, since the lower court’s decision threatened single-color trademarks: think big Pullman brown for UPS, robin’s egg blue boxes from Tiffany, orange for Fiskars scissors, magenta by T-Mobile, green by John Deere for equipment, canary yellow by 3M, Target’s red, Home Depot’s orange, Astra Zeneca’s purple.

MLShapiro