2nd Circuit rules that color can serve as a trademark in the fashion industry, but limits scope of mark for red-soled shoes

Can a single color serve as a trademark in the fashion industry?  According to a recent court decision, the answer is “yes” if certain conditions apply.

In Christian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc., the U.S. Court of Appeals for the Second Circuit overturned a lower court’s holding that single colors cannot be protected in the fashion industry.  The case revolved around Louboutin’s federal trademark registration for the color red in the form of a lacquered red sole on footwear.  After Yves Saint-Laurent (YSL) launched a line of monochromatic shoes, Louboutin sued, asserting that YSL’s red shoe infringed Louboutin’s mark because the YSL shoe included a lacquered red sole.  The lower court held that Louboutin’s trademark registration was inherently functional and thus likely invalid, and it denied Louboutin’s motion to enjoin YSL’s sales of the monochromatic shoe.

On appeal, the Second Circuit held that Louboutin’s red sole mark was valid and enforceable, and that a single color can serve as a trademark.  However, the holding was not without limitations.  Specifically, the Court held that a single color mark is only valid in the fashion industry to the extent that it acquires secondary meaning in the public eye.

In the case of Louboutin’s mark, the Court found that the mark’s secondary meaning was limited to shoes in which the red sole contrasts with a differently colored upper.   Thus, the Court found that a monochromatic shoe was not within the scope of Louboutin’s trademark protection.

On this basis, the Court sustained Louboutin’s trademark registration, yet denied Louboutin’s bid to enjoin YSL’s sale of a monochromatic red shoe.

For more commentary about the Louboutin v. YSL decision, my colleague Staci Riordan discusses the decision on the Fashion Law Blog, available via this link.