Can the color red be trademarked?

Marty Dolan, principal at Dolan Law and his associate Karen Munoz represent victims of wrongful death and personal injury. His column “Law and Wellness,” appears in the Chicago Lawyer and her column appears regularly in the Law Bulletin. This week’s blog is written by Karen Munoz.

That is essentially the question being asked in high fashion litigation between shoemaker Christian Louboutin and fashion house Yves Saint Laurent (YSL).

Louboutin, famous for his sky high stilettos, and the celebrities who are constantly photographed with the red soled heels, obtained a trademark ion the US for his red “signature soles”.  Last year Louboutin sued YSL claiming trademark infringement as YSL had unveiled a line for cruise footwear, Louboutin alleged was “virtually identical” to his shoes.

The legal drama unfolded last year when Louboutin filed a preliminary injunction against the sale of YSL’s red-soled shoes, seeking damages of at least one million dollars and a halt of the sale of YSL red-heeled shoes.  The injunction alleged the Red Sole Mark was” likely to cause and is causing confusion, mistake and deception among the relevant purchasing public.”

YSL responded to the allegations by arguing that red soled heels had been used throughout history dating back to the 1600’s and that no one should have a monopoly on a color.  To allow Louboutin to assert that right on red soled heels would cause a freeze on what other designers are allowed to do.  In addition YSL challenged the trademark being granted to Louboutin in the first place claiming it was overly broad.

Following a hearing on the preliminary injunction, a federal court denied the injunction claiming it Louboutin was not able to prove trademark protection on the red soled heels.

Louboutin appealed the denial of the injunction. Jewelry retailer Tiffany & Co., filed an amicus brief on behalf of Louboutin. Tiffany & Co., who also has a trademark on the famous baby blue hue, urged the court to overturn the denial of the injunction.  Tiffany & Co., has a hand in this fight as the ruling against Louboutin has broader implications for other designers who have similar trademarks.

YSL also had briefs filed by prominent academics on its behalf urging the court to allow the original ruling to stand and that Louboutin should not be allowed to have a monopoly on the color red.

A three-panel appeals court heard arguments at the end of January.  Both sides made persuasive arguments and if the court overturns the lower court’s ruling, we may see the fashion giants go to trial. This case will be closely followed by not only those in the fashion industry but many in the trademark world. At the end of the day, this is just not about red soled heels but trademark law and what can be trademarked.

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