In a long-awaited decision, the Second Circuit, in a surprising twist, ordered that high-end shoe designer Christian Louboutin’s trademark registration for his signature red, lacquered outsoles be limited to designs in which such outsoles contrast in color with an adjoining upper.

As reported earlier, Louboutin sued Yves Saint Laurent over its sale of red shoes having a red outsole and red upper. The district court denied Louboutin’s request for a preliminary injunction, reasoning that a single color could never serve as a trademark for fashion items because such marks were inherently functional. On appeal, the Second Circuit discerned no basis for a per se rule against extending trademark protection to single colors in the fashion industry.

The court’s analysis, however, did not end there. It was incumbent upon Louboutin to show that his trademark warranted protection as a distinctive mark as to the asserted application, which, the court concluded, he failed to do. While the record was replete with evidence that Louboutin’s red outsole coupled with an upper of a different color acquired secondary meaning, Louboutin failed to make a sufficient showing with respect to shoes consisting of a red outsole and red upper. For this reason, the court directed the USPTO to limit Louboutin’s registration to “situations in which the red lacquered outsole contrasts in color with the adjoining ‘upper’ of the shoe,” and affirmed the district court’s decision declining to enjoin the sale of red monochromatic shoes.