Christian Louboutin, maker of high-end shoes famously known for their red soles, has returned to court to request an injunction to keep Christian Dior from debuting crimson shoes with soles to match. Although the shoes have not yet been sold, Louboutin hired a private investigator that discovered that the shoes were being made. This lawsuit is being filed as one of a series of suits and requests for injunctions against design houses including Yves Saint Laurent (YSL) and Carmen Steffens for designing shoes with red soles.
Christian Louboutin owns a US Trademark registration for the red sole on its “women’s high-fashion designer footwear.” The registration has provided Louboutin with protection of the red-sole on his shoes. It is an example of the many novel items that have been trademarked, but the extent of the protection may be determined by the judge in the pending lawsuits.
By definition, a trademark is a word, phrase, symbol, or color that serves as an identifier of source. To serve as a trademark, a color must be distinctive, non-descriptive, and readily identifiable with the owner. This often occurs where, after being used for a period of time, the color acquires secondary meaning, i.e., becomes a source identifier. For example, pink for insulation, brown for package delivery services, and blue for jewelry boxes automatically conjures up specific companies in the mind of consumers. While registration with the US Patent and Trademark Office (USPTO) is not required to establish rights, registration serves as tangible evidence of rights in a trademark and grants the owner of the registration standing to bring an action to protect the trademark in federal court.
It is clear that Louboutin is happy to exercise the rights granted to him by registering the red soles, but it is not clear if the decision to sue in federal court might backfire. While the New York federal judge may rule in Louboutin’s favor, solidifying his rights and putting the fashion industry on notice that no others may create shoes with red soles; alternatively, the judge may rule that the red sole was not a proper candidate for trademark protection. The judge has already expressed concern regarding the lack of specificity in the trademark registration for the color “red.” The judge will also consider if there is any likelihood of consumer confusion where customers might purchase the wrong pair of shoes costing upwards of $1,000 when looking for Louboutin’s brand.
For now, Dior claims that it has no shoes with red soles and has no plans of creating any. Carmen Steffens and YSL, however, are not backing down. YSL counter-sued Louboutin, stating that Louboutin has no right to claim exclusive ownership of red soles, noting that shoes with red bottoms were “worn by King Louis XIV in the 1600s” and Dorothy in the “Wizard of Oz.” Carmen Steffens claims that it has been using multi-color soles since the Brazilian company opened for business 18 years ago—long before Louboutin’s trademark registration.
The outcome of these lawsuits, with the decision in the YSL case coming soon, will help to define the rights that a fashion house may take in a color. Some feel that the USPTO should never have issued the trademark. The judge will have the final say as to the strength of the protection it provides.