Watching my oldest son color in his many coloring books and notebooks is a sight to behold.   His crayon and marker meanderings may not sway a more “unbiased” eye, but to me, he’s a budding Kandinsky.  I am continually amazed by his creativity…and, for an energetic little boy, the casual disregard for the lines he is supposed to color within. As they say, beauty is in the eye of the beholder…and in the context of trademark rights, such aesthetics appear to be at the core of a simmering area of trademark law involving the use of color as a trademark in the fashion industry.  Prompted by a recent Wall Street Journal article regarding the ongoing dispute between fashion icon Yves St. Laurent and  shoe designer Christian Louboutin, many in the fashion industry (and, frankly, other businesses) are asking the question: where can we draw the line on claiming color as a trademark?

As reported in the press (see, e.g. Forbes here and later here, the designer was granted a federal trademark registration in 2008 for a red color applied to the soles of his high-heel shoe designs, apparently claiming a date of first use in 1992. Forgive the pun, but he is “solely” responsible for putting red on the high heel map, so to speak.  His designs have gained notoriety over time, in no small part on the “heels” of Hollywood starlets and socialites.  More importantly, the red color on the sole of high heels has become synonymous with Louboutin, becoming unmistakable by the striking high heels and attendant splash of red when worn (not to mention, the price).

In this case, however, imitation is not the highest form of flattery – YSL sought to roll out its own line of red-soles heels in the fall of 2011, prompting Louboutin to seek a preliminary injunction from the courts to prohibit YSL’s launch of these products.  Judge Victor Marrero of the Southern District of New York, however, denied the injunction in a 30 page ruling, essentially finding that although Louboutin cultivated a great deal of secondary meaning behind his “laquered red soles”, the color is not entitled to trademark protection “[b]ecause in the fashion industry color serves ornamental and aesthetic functions vital to robust competition….” Relying on a well-settled area of trademark law that prohibits “functional” elements of a design from operating as a trademark, Judge Marrero essentially extended it to find aesthetic use to be essentially functional, and therefore, not entitled to trademark protection.  So, even though trademark law and attendant federal regulations governing the prosecution and federal registration of trademarks permit a color to function as a trademark, color in the fashion industry is unique and the registration should not have been granted.

This battle has more than just Mr. Louboutin seeing red – it is escalating on the appeal, where YSL has gotten 11 law professors to file an amicus brief in support of YSL’s position with the Court of Appeals for the Second Circuit.  It seems that the main arguments against Louboutin pivot on the point mentioned above – that color should not qualify for trademark protection in the “fashion industry” where, rather than act as a brand identifier, the color is part of the design aesthetic, and as such essentially functional.  Under this guise of functionality, it seems they feel that designers should not have their design palette restricted by color trademarks that can last for a potentially unlimited period of time (i.e. as long as the trademark owner keeps using the color mark). Respectfully, this sets the bar so high so as to effectively prevent the use of color as a trademark in the fashion industry in most instances (which, arguably, appears to be the intent).

Forgive the pun (again), but my problem with this line of reasoning is simple – where is the line drawn?  For example, Tiffany & Co. has trademarked its robin-egg blue color for its packaging – the color is clearly a design aesthetic (as well as brand identifier), so is their trademark in jeopardy?  What if Tiffany  Co. extends it to a pendent? What about the use of color outside the fashion industry for aesthetic reasons – Owens-Corning fiberglass has the color “pink” trademarked not only for for its home insulation, but for certain adhesive tape as well (arguably for aesthetic reasons to blend in with their insulation), yet are those marks not in jeopardy simply because Owens-Corning is not in the fashion industry?

Needless to say, this trial court decision has sent shockwaves that are reverberating beyond just fashion. Although I understand that the “functionality” doctrine “trumps” secondary meaning under the law, it’s very hard to dismiss the strong secondary meaning that Mr. Louboutin’s high heels with red soles have earned in the marketplace over time and the narrow enforcement sought by Louboutin.  No one apparently cared about such lacquered red soles back in 1992, and Mr. Louboutin built his brand around them as they became more popular – a combination of color with high heel spikes. Rather then impair competition, his efforts created the demand, and an identity with his brand that is now being attacked on the basis that it “offers a significant non-reputation-related advantage to a competitor” that should rest within the purview of design patents rather than trademarks.  In other words, he should have sought a design patent (and its limited term), rather than be allowed trademarks rights which can run forever so long as the marks remains used in commerce.  I appreciate the professors’ arguments, but they remain unpersuasive to this author. Many years of law practice in the private sector tell me that YSL likely did not think about rolling out it’s own line of red soled heels almost 20 years after Mr. Louboutin “solely” because of design “aesthetics” – if color was the motivating factor, I think the color green had far more influence on that decision…;)

In any event, this is an interesting case, and one that more than the fashion industry is watching.  Stay tuned…in a trademark sense, this appeal may place color in a whole new light…

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