I’m seeing red! trademark infringement 2

In addition to the litigation discussed in my last article, the Second Circuit Federal Court of Appeals previously issued a 2012 trademark infringement decision in which the parties were high profile in haute couture: Louboutin et al v. Yves St. Lauren et al. [hereinafter “Louboutin” and “YSL”]. In this case Louboutin owned a federal trademark registration that displayed a shoe with a bright red outsole. YSL displayed the red outsole in its own shoe design, so after unsuccessful negotiations Louboutin filed a lawsuit for trademark infringement and other related grievances in federal court.

YSL initially contended that a color per se could never be a legally valid trademark in the apparel industry. Louboutin’s position was that a single color can be protected as a trademark for apparel in the United States if that color is (i) distinctive and (ii) associated in consumers’ minds with the high fashion shoes of a specific designer. The appellate court’s review of law revealed that the United States Supreme Court recognizes that a color qualifies as a valid registered trademark under certain circumstances. The appellate court also concluded that (i) there was no exception for apparel design, and (ii) a color mark in this industry is valid and qualifies for protection under the same circumstances as in other industries.

The appellate court then reviewed the circumstances under which a color would not qualify as a federally protected valid trademark or service mark. For example, if the mark includes a feature that is also a functional component of the product, then this functional feature is only appropriately protected under patent law. The court further explained that protection under patent law extends for a limited time period, whereas trademark protection can be extended indefinitely. Consequently there would be an improper extension for the life of a product innovation if trademarks were used as a ‘back door’ to obtain protection.

The court also concluded that a color does not qualify as a protected mark where the color, although ornamental and not functional, provides a non-reputation related competitive advantage to the trademark owner. In other words, if other businesses are prevented from using the design and thereby lose a competitive advantage, then the design does not qualify for trademark protection. In the inevitable grey area a court must balance (i) interests of other businesses with (ii) the owner’s investment in creating, distributing and using the design in advertising and commerce so (iii) purchasers associate the design with the source of the product (in this case shoes).

The court then concluded that the red lacquer color on the outsoles of Louboutin shoes was sufficiently distinctive because Louboutin had invested sufficient time, money and expertise in associating (i) the red color on its shoe outsoles (ii) with itself as the source of the shoes (iii) in the minds of relevant potential purchasers. In fact it was undisputed, even by YSL, that Louboutin had successfully commercially maintained this recognition feature to customers for over twenty years. However, the court limited the scope of the red color mark to shoes in which the upper portions of the shoes displayed a contrasting color. The court did so, because review of the factual record revealed that a color contrast between red outsoles and the remainder of the shoe was the distinctive feature that customers recognized. Consequently customers who purchases shoes that were uniformly red throughout did not distinguish between sources, including Louboutin. The court then directed the United States Patent & Trademark Office to modify the registration of the Louboutin mark so that the mark was only protected and valid when the red insole was a different color from the remainder of the shoe.

© 2013 Adrienne B. Naumann, Esq.
Ms. Naumann does not endorse or sponsor the advertisements at adriennebaumann.wordpress.com.

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