Single Colors That Have Acquired Distinctiveness May Serve as Trademarks in Fashion Industry
What This Means To You
- If a party wishes to develop trademark rights in a specific color, it should use the color consistently and in a recognizable fashion that will lead consumers to associate such use with that party.
- A trademark does not need to be a logo or word; it can be any device that serves to distinguish one party from another in the minds of relevant consumers.
In a much-awaited decision, Christian Louboutin v. Yves Saint Laurent American Holding, Inc.
, the U.S. Court of Appeals for the Second Circuit (Second Circuit) overturned the lower court’s decision that a single color could never serve as a trademark in the fashion industry. The Second Circuit stated that while a color may sometimes be functional in the fashion industry, the functionality doctrine in trademark law should prevent one party from monopolizing advances in a functional design.
Louboutin’s trademark rights were limited to the use of a red lacquered sole that contrasts with the color of the remainder of the shoe. The restriction imposed by the Second Circuit limited Louboutin’s trademark rights to those instances in which consumers had grown accustomed to associating a red sole with Louboutin and ensured that other parties would have the freedom to continue using the color red in a non-confusing manner. This allowed YSL to continue selling monochromatic red shoes that were red all over, including their soles.
Fashion designer Christian Louboutin became famous in high-end fashion circles for marking the soles of his shoes with a distinctive high-gloss red color so viewers at fashion shows would immediately recognize the shoes as his. Louboutin owned a trademark registration that described the mark as “a lacquered red sole on footwear.”
Yves Saint Laurent (YSL), also in the fashion industry, produced a series of monochromatic shoes, one of which was entirely red. Louboutin sued on the grounds that the use of a red sole on a shoe infringed his trademark rights.
In reversing the lower court’s decision, the Second Circuit clarified that Louboutin’s trademark rights were limited to circumstances in which a red lacquered sole on footwear contrasted with the upper portion. The Court held that the contrast between the red sole and upper portion of the shoe was what consumers had come to understand as a source indicator, not red soles alone.
By restricting the protection for Louboutin to this specific circumstance, the Second Circuit was able to uphold protection for Louboutin’s mark, which had become distinctive and quite famous over time. This illustrates that each trademark case is highly fact-specific and must be based on how consumers understand a trademark.
It is important to recognize that YSL had produced the same monochromatic red shoes at various intervals in the past, even predating Louboutin’s use of a red lacquered sole. While the Court did not expressly state that this fact was dispositive, it may reasonably be interpreted as demonstrating that YSL was not attempting to cash in on Louboutin’s reputation.
While parties acting in good faith may unintentionally be liable for trademark infringement, in close cases, a party’s intent may be important. In this case, the fact that YSL produced entirely red shoes prior to Louboutin becoming synonymous with red soles shows that YSL was not riding on the coattails of Louboutin’s red lacquered soles.
If YSL was unable to continue producing shoes made before Louboutin started using his mark, YSL would face a significant non-reputation related disadvantage. The Second Circuit stated, “when the aesthetic design of a product is itself
the mark for which protection is sought, we may also deem the mark functional if giving the mark holder the right to use it exclusively ‘would put competitors at a significant non-reputation-related disadvantage.’”
Trademarks are designed to protect consumers. How consumers view a trademark—and whether they recognize it as distinguishing the mark holder from its competitors—will determine whether a mark deserves trademark protection.
An important message from this case is to think outside the box when considering trademark rights. Anything capable of distinguishing one party from another in the minds of consumers may be given trademark protection, even though, in some cases, the protection may have a narrow scope.