Jake couldn’t trademark his black suit, nor should Louboutin have a monopoly over his red sole.

Jake couldn’t trademark his black suit, nor should Louboutin have a monopoly over his red sole.

Recently, the WSJ reported in Color Wars: Luxury Makers Battle Over Red-Soled Shoe that the Southern District of New York denied a preliminary injunction that fashion house Christian Louboutin (“CL”) sought against Yves Saint Laurent (“YSL”) for making high heeled shoes with a red sole. CL has a trademark over a “lacquered red sole” on “women’s high fashion designer footwear.” The Court ruled that the color in this context served a functional purpose and was therefore not protectable subject matter.  At first blush, the Court’s decision may seem far reaching.  It is not.

Color is generally not something you can trademark. There is an exception to this rule. I could trademark the pantone process blue used by my firm so long as I show that consumers associate the particular shade of blue with my firm, and as long as the color is not “functional.” Camouflage, for example, serves such a functional purpose by concealing the person from view. Black, as another example, by conveys a feeling of melancholy and formality, among other things, when used for a suit.

Surprisingly, the Court ruled in CL v. YSL that CL’s red bottomed trademark could not be protected even if CL were able to show secondary meaning: that consumers associated the red with CL’s brand, and not just as some fad in the fashion industry. In so proclaiming, the Court seemingly fan afoul of well established trademark principles.

However, the Court was right to rule the way it did given: (1) CL’s trademark application didn’t claim a particular shade of red, bur red in general; (2) the application also sought to protect the red sole not only for high heels, but for “high fashion footwear,” which covers a broad spectrum of shoes, including flats; and (3) color, especially red, plays a big role in the fashion industry, unlike in other industries. There is no arguable functional purpose to the color pink in the fiberglass industry, and so courts have allowed a fiberglass company to trademark the color for fiberglass. There is, however, such a purpose in the case of black for Jake and Elwood’s bluesy suits. The same is true of red soled sexy heels.

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