A trademark is a word, symbol, or phrase, used to identify a particular manufacturer or seller's products and distinguish them from the products of another. It is used to secure the public’s interest in protection from deceit as to the source of its purchases. One example of a trademark is a descriptive mark. A descriptive mark directly describes a product but is not entirely distinctive such as “Holiday Inn”. This kind of mark acquires secondary meaning once consumers primarily associate that mark with a particular producer rather than the underlying product. Secondary meaning indicates that although the mark is on its face descriptive of the goods or services, consumers recognize the mark as having a source indicating function. So instead of associating “Holiday Inn” with merely a hotel or inn, the public at large has come to associate this name with the brand itself. Once it can be shown that a descriptive term or phrase has achieved this second meaning, a protectable trademark is developed. Secondary meaning can be achieved through long-term use, or large amounts of advertising and publicity. The acquisition of secondary meaning is often proven through the use of consumer surveys that show that consumers recognize the mark as a brand.
A trademark is a form of intellectual property but in many ways it is also an extremely important business asset that should be taken very seriously as it may be integral to the growth of your business and also serve as a protective mechanism from potential imitators and competitors. Understanding trademark conflicts within various business industries can help serve as an essential learning tool for anyone looking to expand their own brand or idea.
The Battle Over the Red Sole
In the recent pivotal trademark case of Christian Louboutin S.A. (“Louboutin” v. Yves Saint Laurent Am., Inc. (“YSL”), the U.S. Second Circuit Court of Appeals ruled in a battle between the high-end premiere French fashion footwear designers just in time for New York Fashion Week this past September. In this battle, Louboutin won the right to protect his signature lacquered red soles from those who copy the idea.
The question presented was whether a single color may serve as a legally protected trademark in the fashion industry and, in this specific situation, as the mark for Louboutin.
The U.S. Patent and Trademark Office granted Louboutin a registered trademark for the Red Sole Mark in 2008. In April of 2011, Louboutin accused YSL of trademark infringement for duplicating the red soles on four shoe styles in YSL’s 2011 Cruise Collection. A lawsuit filed in June 2011 by Louboutin targeted four specific shoes from that collection: the Palais, Tribute, Tribtoo, and Woodstock models which were entirely monochromatic with red on both the upper parts of the shoes as well as the soles.
In August of 2011 before the case was appealed, a preliminary injunction against YSL was declined that would have kept YSL from selling shoes with red soles. The court essentially ruled that Louboutin’s claim to the Red Sole Mark was overly broad and since color serves an important aesthetic function, which is crucial to competition in the fashion industry, Louboutin would be unlikely to prove that it is entitled to trademark protection even if the public has come to recognize the red soles as synonymous to the Louboutin label.
In the new ruling, Louboutin was granted trademark protection with limitations. The Red Sole Mark would be protected as long as the color of the shoe, or “upper”, differs from the red sole. The court ruled that completely red shoes, or monochromatic shoes, cannot be trademarked, nor can the specific shade of red, such as YSL’s designs that were entirely red.
According to the decision, Louboutin introduced his signature red sole in 1992 and has gradually come to gain secondary meaning in the market meaning that the public does widely associate the red colored soles with the Louboutin label. The court reasoned that the Red Sole Mark has become so recognizable that one could instantly identify the source of this particular shoe- and that source being Louboutin. They supported their reasoning by the facts that through high-stakes commercial markets and social circles in which these sort of things matter greatly such as the premier fashion labels and celebrities in Hollywood, Louboutin had made itself absolutely and clearly distinctive and identifiable thereby setting itself apart from other footwear as well as YSL which has been selling monochromatic shoes such as all purple, red, blue shoes, since the beginning of the 1970’s.
Can a Single Color Serve as a Trademark?
While YSL can now continue to make its monochrome red shoes, it is still very much felt by the company and various critics of this decision that no designer should ever be allowed to monopolize a color. The case, however, may return to the district court for further proceedings since YSL has filed counterclaims against Louboutin.
What we should take away from this extremely unique and interesting trademark infringement case is that color can be trademarked in the fashion industry and that Christian Louboutin's world famous Red Sole Mark is protectable, valid and enforceable. Nevertheless, this case is a victory for both parties because although the Red Sole Mark is protectable, the court has set limitations on such protection, setting a strong precedent affecting all designers in the fashion industry when it comes to registering a trademark and how the prospective trademark may eventually be protected.
The battle over the Red Sole Mark demonstrates to us that the consumer market does on a mainstream level associate the red sole primarily with Louboutin shoes. Louboutin's now widespread association by the public at large of the red soles would warrant trademark protection (since it has gained a secondary meaning) so as to restrict other footwear designers from using external red soles that contrast with the color of the upper part of the shoe.
Now that you understand that a trademark is one kind of intellectual property, it is easy to see that intellectual property is a vast area within the law and full of interesting junctures. Whether you are an individual entrepreneur with a cutting-edge idea or an internationally growing business, protecting your company's investments and innovations is extremely important as well as growing and maintaining your intellectual property portfolio. The global marketplace is changing at faster rate now than ever before. Consequently, hiring the right legal professional to protect your ideas and innovations may be the key to getting an edge in an already highly competitive marketplace and to achieving business success.
Disclaimer: This article is not intended to be legal advice. Legal advice depends on each and every person's particular circumstance. This article is for informational purposes only. Arora Law Firm and Radhika Arora, Esq. specifically disclaim any responsibility for positions taken by readers in their individual cases or for any misunderstanding on the part of readers of this article and/or magazine.
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