The U.S. Court of Appeals for the Second Circuit denied a motion to modify a mandate issued by the Court in an earlier decision (See IP Update, Vol. 15, No. 9) directing the U.S. Patent and Trademark Office (PTO) to change a trademark registration to limit the trademark of a red lacquered outsole on footwear to shoes where the shoe upper is a contrasting color. Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc., Case No. 11-3303-cv (2d Cir., Mar. 8, 2013) (per curiam).

In its September 2012 decision, the Second Circuit overruled the district court, which held that a single color can never serve as a trademark in the fashion industry. The Second Circuit ruled that while Louboutin’s trademark for a red sole with contrasting upper was valid, the evidence did not show that the secondary meaning of Louboutin’s red sole mark extends to uses where the upper portion of the shoe does not contrast, i.e., a monochromatic shoe. Therefore, the Court directed the PTO to limit Louboutin’s trademark to only those situations where the red lacquered outsole is used with an adjoining upper that contrasts in color. (See IP Update, Vol. 15, No. 9).

Louboutin subsequently filed a letter motion with the Clerk of the Court, requesting a modification of that mandate. Louboutin explained that the PTO intended to adopt the Court’s language verbatim, and Louboutin requested that the Court modify the mandate in a manner that would be more precise.

The Second Circuit denied that motion. The Court explained that granting the request would require the Court to recall the mandate, a power that “can only be exercised in extraordinary circumstances” and “is one of last resort, to be held in reserve against grave, unforeseen contingencies.”

The Court enumerated four factors to be considered in connection with whether to recall a mandate: (1) whether the governing law is unquestionably inconsistent with the earlier decision, (2) whether the movant brought to the Court’s attention that a dispositive decision was pending in another court, (3) whether there was a substantial lapse in time between the issuing of the mandate and the motion to recall the mandate, and (4) whether the equities “strongly favor” relief.

The Court ruled that Louboutin made no showing that any of the four factors favored a recall and that the matter did not present the “exceptional circumstances” required to recall a mandate.

Practice Note: When asking a circuit court to modify a mandate, a party must make a strong showing that the circumstances are exceptional and meet the high burden required by the four factors considered by the Second Circuit in connection with such a petition.