Fashionistas can rejoice now that the Second Circuit has overturned the District Court’s ruling that would have stripped Louboutin of its trademarked Red Sole Shoe. But YSL also scored a victory, of sorts, in that YSL can still sell their monochromatic red shoe that also features a red sole not withstanding Louboutin’s enforceable trademark.
Louboutin introduced its signature high end shoe with the bright red lacquered soles in 1992. These “Red Sole Shoes” have since become instantly recognizable as a Louboutin shoe. Louboutin was granted a registration from the U.S. Patent and Trademark Office for the red sole 2008. In 2011, YSL began selling a line of monochromatic shoes featuring one color on the entire shoe including purple, green, yellow, and, of course, red. Loubotin then sued YSL for, among other things, infringement of its Red Sole trademark.
The District Court denied Louboutin request for a preliminary injunction holding that single color marks are inherently “functional” in the fashion industry and that any registration for such a trademark should be held invalid. On Wednesday, the Second Circuit reversed this per se rule that color alone cannot serve as a trademark in the fashion industry. The Second Circuit cautioned that courts must avoid “jumping to the conclusion that an aesthetic feature is functional merely because it denoted a product’s desirable source.”
Following Supreme Court precedent, the Second Circuit reasoned that color marks can indeed merit protection, even in the fashion industry, if it has acquired secondary meaning. In this case, the record contained extensive evidence that Louboutin’s Red Sole Shoes have acquired secondary meaning and that Louboutin’s marketing efforts have created a brand with worldwide recognition. However, the Second Circuit reasoned that Louboutin failed to provide sufficient evidence that the secondary meaning extended to shoes where the red sole did not contrast with the upper shoe, i.e., where the entire shoe is red like the YSL shoe at issue in this dispute.
In conclusion, the Second Circuit limited Louboutin’s federal trademark registration to cover the red sole shoe only when the upper portion of the shoe contrasts with the red sole. As such, because YSL’s shoe was monochromatic featuring the red color in both the upper and sole of the shoe, Louboutin’s Lanham Act claims were denied.
The Second Circuit readily acknowledged that the fashion industry has “special concerns” in the operation of trademark law and that it has been “argued forcefully” that the laws in the United States do not adequately protect fashion designers. This decision rekindles trademark protection for those designers, like Louboutin, who have created through blood, sweat and marketing, instantly recognizable brands.