Reversing a federal court decision, the 2nd Circuit has ruled that a single color mark can acquire secondary meaning – and therefore trademark protection – in the fashion industry.
Designer Christian Louboutin started a high-fashion war when he sought an injunction against fashion house Yves Saint Laurent’s sale of shoes with a red sole. YSL successfully argued to the lower court that the Lanham Act does not allow a trademark for a single color as it serves an “ornamental and aesthetic” function in the fashion industry.
But the 2nd Circuit disagreed, holding that the red soles had acquired “limited ‘secondary meaning’ as a distinctive symbol that identifies the Louboutin brand.” Louboutin has painted the outsoles of his women’s shoes with red lacquered paint since 1992, the court noted. Color alone – at least sometimes – can meet the basic legal requirements for use as a trademark, the court recognized.
Analyzing the “aesthetic functionality” of Louboutin’s mark, the court considered both the markholder’s right to enjoy the benefits of its effort to distinguish its product and the public’s right to the “vigorously competitive market” protected by the Lanham Act.
“We see no reason why a single-color mark in the specific context of the fashion industry could not acquire secondary meaning – and therefore serve as a brand or source identifier – if it is used so consistently and prominently by a particular designer that it becomes a symbol, ‘the primary significance’ of which is ‘to identify the source of the product rather than the product itself,’” the 2nd Circuit wrote.
The court noted “extensive evidence” of Louboutin’s advertising expenditures, media coverage, and sales success, which it said demonstrated “both that Louboutin has created a ‘symbol’. . . and that the symbol has gained secondary meaning that causes it to be ‘uniquely’ associated with the Louboutin brand. . . . By placing the color red ‘in [a] context [that] seems unusual,’ and deliberately tying that color to his product, Louboutin has created an identifying mark firmly associated with his brand which, ‘to those in the know,’ ‘instantly’ denotes his shoes’ source.”
However, the panel said that Louboutin failed to present sufficient evidence to extend protection for the mark to the use of a red sole used on an all-red shoe – just four pictures of the hundreds of images of Louboutin shoes presented were monochromatic. “It is the contrast between the sole and the upper that causes the sole to ‘pop,’ and to distinguish its creator,” the court said.
Therefore, the court granted the injunction against YSL for “uses in which the red outsole contrasts with the color of the rest of the shoe” and instructed the Patent and Trademark Office to limit Louboutin’s trademark registration accordingly.
To read the 2nd Circuit’s opinion in Louboutin v. Yves Saint Laurent,
Why it matters: In this landmark decision, the Second Circuit held that a single color can function as a trademark in the fashion industry. Nonetheless, this closely watched case was not an outright win for Christian Louboutin and his famous red-soled shoes. Although the court held that the use of a single color could be trademarked in the fashion industry, it limited protection only to red-soled shoes with a contrasting upper. The YSL shoes at issue were monochromatic red, leaving them unaffected by the injunction and both sides claiming victory.