The Color Red lives for another day. The recent Second Circuit Court of Appeals’ opinion in Christian Louboutin S.A. v. Yves Saint Laurent Am. Inc., __ F.3d __, 103 USPQ2d 1937 (2d Cir. 2012), which considered designer Christian Louboutin’s claims for infringement of his high-fashion “red-sole shoes,” made no new or dramatic change to the law of single-color marks. Rather, it reflects a reasoned, fact-based decision on the subject. Louboutin had asserted the registration for his mark, described as “a lacquered red sole on footwear” for “women’s high fashion designer footwear” (the “Red Sole Mark”), against Yves Saint Laurent for its sale of monochromatic red shoes. The Second Circuit reversed the district court in part, upholding the right to protection granted by the Lanham Act for single-color trademarks, affirmed the lower court’s holding of non-infringement, and limited the Louboutin registration to cover only red-sole shoes with shoe “uppers” of a contrasting color. Id. at 1950-51.

The public policy issues raised over the right to protection of a single color as a mark have been debated for years. With issuance of the Louboutin decision, the U.S. jurisprudence of single-color trademarks not only spans more than a century dating to the Supreme Court decision in A. Leschen & Sons Rope Co. v. Broderick & Bascom Rope Co., 201 U.S. 166 (1906), but interestingly, is bookended by cases involving The Color Red.

History of Single Color Trademarks – Red to Red and Many Colors In Between

In 1906, the U.S. Supreme Court issued its first decision considering the availability of protection for a single color trademark. In Leschen, the Court denied protection to The Color Red, holding that a claimed trademark for “a red … distinctively colored streak applied to or woven in a wire rope,” was too indefinite to be the subject of registration under the Trademark Act of March 3, 1881. The Supreme Court wrote:

Whether mere color can constitute a valid trade-mark may admit of doubt. Doubtless it may, if it be impressed in a particular design, as a circle, square, triangle, a cross, or a star. But the authorities do not go farther than this.

201 U.S. at 171. Over time, that doubt has slowly been erased, gradually providing for greater protection of single color marks.

The Color Red was again rejected as a trademark in 1949 by the Third Circuit, during an era where the courts refused to protect marks under the “color depletion” theory that suggested that there were insufficient colors for all competitors. In Campbell Soup v. Armour & Co., 175 F.2d 795, 798 (3d Cir.), cert. denied, 338 U.S. 847 (1949), the court refused to protect the red and white colors of Campbell Soup’s labels, fearing it might “monopolize red in all its shades.”

Nearly 80 years after Leschen, the Federal Circuit Court of Appeals issued its seminal decision of In re Owens-Corning Fiberglas Corp., 774 F.2d 1116 (Fed. Cir. 1985), that established the modern law of single color trademarks and held a single-color, per se, registrable as a trademark. The court held that Owens-Corning’s claimed rights in The Color Pink for insulation was not barred from registration as a trademark on the basis of functionality and that it was registrable with a showing of secondary meaning. The court found that The Color Pink had no utilitarian purpose and did not deprive competitors of any reasonable right or competitive need, Id. at 1122, and that even if the color was ornamental, it would not prevent it from serving as a trademark. Id. at 1123.

Following Owens-Corning, a 2-2 split of circuits developed, with the Eighth Circuit following the Federal Circuit view, Master Distributors, Inc. v. Pako Corp., 986 F.2d 219, 224 (8th Cir. 1993) (The Color Blue for splicing tape), and the Seventh and Ninth Circuits refusing to protect a single color alone, NutraSweet Co. v. Stadt Corp., 917 F.2d 1024, 1028 (7th Cir. 1990) (The Color Pastel Blue for sugar substitute packets); Qualitex Co. v. Jacobson Products Co., 13 F.3d 1297 (9th Cir. 1994) (The Color Green-Gold for dry cleaning press pads).

Click here to view timeline.

The Supreme Court resolved the circuit split in its unanimous decision in Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995), adopting the Owens-Corning position. In an oft-quoted phrase, the Qualitex Court emphasized that “It is the source-distinguishing ability of a mark—not its ontological status as color ... – that permits it to serve these basic purposes.” Id. at 164. The Court rejected both concerns over shade confusion and the color depletion theory. Id. at 167-169. But, quoting the Restatement, the Supreme Court nevertheless left open the possibility of a bar to protection based on the controversial doctrine of “aesthetic functionality,” stating that the ultimate test of aesthetic functionality “is whether the recognition of trademark rights would significantly hinder competition.” [citations omitted]. 514 U.S. at 170.

Following Qualitex, the courts and TTAB reached varied results in assessing the use of single colors: Mana Products, Inc. v. Columbia Cosmetics Mfg., Inc, 65 F.3d 1063 (2d Cir. 1995) (denying protection); L.D. Kichler Co. v. Davoil, Inc., 192 F.3d 1349 (Fed. Cir. 1999) (reversing holding of functionality); McNeil Nutritionals, LLC v. Heartland Sweeteners, LLC, 511 F.3d 350 (3d Cir. 2007) (finding no secondary meaning); and Saint-Gobain Corp. v. 3M Co., 90 USPQ2d 1425, 1448 (TTAB 2007) (finding The Color Purple functional for sandpaper).

Although not addressing a single color, the Fifth Circuit Court of Appeals handed down the most recent and significant pre-Louboutin case on color marks. In Board of Supervisors For Louisiana State University Agricultural And Mechanical College v. Smack Apparel Co., 550 F.3d 465 (5th Cir. 2008), the court rejected the aesthetic functionality doctrine altogether and ruled in favor of several universities in protecting their unregistered color schemes “and other indicia.” The stage was set for Louboutin.

Louboutin – Aesthetic Functionality Collides With the “Law” of Fashion

Perhaps no trademark decision has garnered as much attention in the fashion industry, coupled with disdain in the trademark bar, as the widely-criticized Louboutin district court opinion, which seemingly turned the law of single color marks back 100 years to the dictates of Leschen. Christian Louboutin S.A. v. Yves Saint Laurent Am. Inc., 778 F. Supp. 2d 445 (S.D.N.Y. 2011), aff’d in part, rev’d in part, 103 USPQ2d 1937 (2d Cir. 2012).

In an effort to enforce its Red Sole Mark, Louboutin sued YSL over shoes that featured bright red outsoles as part of a monochromatic design in which the shoe was entirely red (in a line with shoes that were entirely red, entirely yellow, entirely green, etc.). YSL counterclaimed, inter alia, for cancellation of the Red Sole Mark registration as functional. The district court’s opinion detailed facts reflecting the fame (i.e., secondary meaning) of the Louboutin shoes, including recognition in a Jennifer Lopez song, but framed the issue as whether “trademark protection should not have been granted to [the] trademark registration.” 778 F. Supp. 2d at 448. Following its self-described “fanciful hypothetical” – envisioning Picasso seeking to enjoin Monet from use of a “distinctive indigo” for water as too close to Picasso’s Blue Period “color of melancholy” – the court concluded that art and fashion are essentially parallel in sharing the same “dependence on color as an indispensable medium.” Id. at 452.

The district court found no infringement by YSL of the Red Sole Mark and went on to invalidate Louboutin’s Red Sole Mark registration. The court applied the doctrine of aesthetic functionality, distinguishing Qualitex and Owens-Corning as relating to “industrial” marks, and held that color was used in designs primarily “to advance expressive, ornamental and aesthetic purposes” and was therefore functional in the fashion industry. The result not only denied protection of single-color marks to the entire broader fashion industry, but potentially to other industries. Louboutin appealed. The International Trademark Association, Tiffany’s (owner of The Color Robin’s Egg Blue for jewelry), and a group of professors filed amicus briefs.

In the highly-anticipated decision on appeal issued this fall, the Second Circuit Court of Appeals unraveled the district court’s overreaching opinion. Christian Louboutin S.A. v. Yves Saint Laurent Am. Inc., __ F.3d __, 103 USPQ2d 1937 (2d Cir. 2012). The Second Circuit reversed, finding that the district court had abused its discretion by making “errors of law. ” Id. at 1940, 1950. The court held that, to the extent the district court’s decision denied protection to any single color trademark in the fashion industry, it was inconsistent with Qualitex. Id. at 1938. The Second Circuit concluded that there was no per se rule barring color marks in the fashion industry, and that marks were entitled to registration and protection, subject to the traditional analysis of distinctiveness and functionality. Id. at 1947.

Much of the court’s lengthy opinion outlined a detailed history of color marks, their protectability, and the defense of aesthetic functionality. In a fact-specific analysis, the Second Circuit then found that Louboutin had proven distinctiveness of red-sole shoes with contrasting shoe “uppers,” but that the record did not demonstrate distinctiveness of its red-sole shoes in “any” circumstance, such as in the case of monochromatic red shoes. Id. at 1950. The court therefore used its powers under the Lanham Act, 15 U.S.C. §1119, to modify the Louboutin trademark Red Sole Mark registration only to cover shoes with red soles when used with contrasting color shoe “uppers.” Id. Having determined that YSL had not “used” Louboutin’s mark at issue (as modified), the court concluded that it need not reach the issues of likelihood of confusion or functionality of the Red-Sole Mark. Id. It affirmed the district court’s order that declined to enjoin YSL’s red monochromatic shoe, but otherwise reversed the district court to the extent “it purposed to deny trademark protection to Louboutin’s use of contrasting red lacquered outsoles.” Id. at 1951.

Does The Louboutin Court’s Analysis Square With Prior Law on Single Color Marks?

The Second Circuit’s well-reasoned opinion restored equilibrium to the law of protection of single-color marks and reached a result generally viewed in the trademark bar as the “right” one on the facts. While not treating the fashion industry as deserving of unique treatment, the court recognized the importance of a factual analysis of the evidence of secondary meaning of the specific mark at issue and considerations of competitive necessity in any specific industry. Alas, the caché associated with the Louboutin brand for red-sole shoes remains in place for the “well-heeled.” But the rest of single color mark holders can breathe a sigh of relief that the Second Circuit came to their rescue. The Second Circuit ultimately left open the question of how far the law should go in protecting colors, but it reached a rather practical – if not “fashionable” – end to a case that many in both the trademark and fashion communities believe would have been better left unfiled. All and all, the courts have come a long way in 100 years from Leschen to Louboutin to protect The Color Red.1