2nd Circuit Affirms Validity Of Louboutin’s Trademark Red Soles

By Joseph Mandour on September 5, 2012

high-heel-thumb-200x150-30643California – The Second Circuit on Wednesday ruled that French high fashion shoemaker Christian Louboutin is entitled to trademark protection for the iconic red soles on its shoes, dealing a blow to competing fashion house Yves Saint Laurent in its bid to outfox Louboutin’s infringement claims.

Louboutin had asked the appeals court to review a New York district judge’s August 2011 denial of its motion for a preliminary injunction against YSL’s alleged trademark infringement. The district court found that Louboutin’s trademark was likely not enforceable and declined to enter a preliminary injunction against YSL’s use of the trademark.

But the district court’s holding that a single color can never serve as a trademark in the fashion industry is inconsistent with the Supreme Court’s decision in Qualitex Co. v. Jacobson Products Co., and so the lower court erred by resting its denial of Louboutin’s preliminary injunction motion on that ground, the Second Circuit said.

The appeals court concluded that Louboutin’s trademark, consisting of a red, lacquered outsole on a high fashion woman’s shoe, has acquired limited “secondary meaning” as a distinctive symbol that identifies the Louboutin brand.

The Second Circuit limited the trademark to uses in which the red outsole contrasts with the color of the remainder of the shoe, ruling that only the modified trademark is entitled to trademark protection.

Because Louboutin tried to enjoin YSL from using a red sole as part of a monochrome red shoe, the appeals court partially affirmed the district court’s order insofar as it declined to enjoin the use of red lacquered outsoles in all situations. It partially reversed the district court’s ruling insofar as it purported to deny trademark protection to Louboutin’s use of contrasting red lacquered outsoles.

Louboutin, a designer of high-fashion women’s footwear and accessories, has since 1992 painted the “outsoles” of his women’s high-heeled shoes with a high-gloss red lacquer. He registered the red lacquered outsole as a trademark with the United States Patent and Trademark Office in 2008.

In 2011 YSL prepared to market a line of monochrome shoes in purple, green, yellow, and red. Louboutin learned that YSL was marketing and selling a monochrome red shoe with a red sole, requested the removal of the allegedly infringing shoes from the market, and briefly entered into negotiations with YSL in order to avert litigation. Louboutin filed his trademark infringement complaint against YSL in April 2011, after those negotiations failed.

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