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Louboutin Red Soles Entitled to Trademark Protection: Second Circuit
Practical Law Legal Update 7-521-2630 (Approx. 3 pages)
Louboutin Red Soles Entitled to Trademark Protection: Second Circuit
by PLC Intellectual Property & Technology
| Published on 06 Sep 2012 • USA (National/Federal) |
In Christian Louboutin S.A. v. Yves Saint Laurent America Holdings, Inc., the US Court of Appeals for the Second Circuit reversed in part the district court's ruling that Louboutin's red lacquered shoe soles are not entitled to trademark protection. However, the Second Circuit limited protection to red soles that contrast in color with the rest of the shoe, finding that only contrasting uses had achieved secondary meaning sufficient for trademark protection under the Lanham Act. The court affirmed the district court's denial of a preliminary injunction on the basis that YSL's shoe did not use Louboutin's mark, because that shoe was monochrome red with a red sole, outside the scope of what the court found protectable.
On September 5, 2012, in Christian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc., the US Court of Appeals for the Second Circuit issued an opinion reversing in part the district court's ruling denying trademark protection to Louboutin's use of a red lacquered sole on shoes, but affirming the district court's denial of a preliminary injunction on different grounds and remanding the case for proceedings on Yves Saint Laurent's (YSL) counterclaims.
The court rejected the district court's ruling that a single color can never receive trademark protection in the fashion industry. It then found that Louboutin's red sole mark qualifies for trademark protection because it has acquired secondary meaning, but only when the red sole contrasts in color with the upper part of the shoe. The court found that Louboutin had not established secondary meaning for the red sole with an entirely red shoe, and modified the mark limit it to a contrasting red sole.
Because the YSL shoe Louboutin sought to enjoin was a monochrome red shoe with a red sole, the Second Circuit found that the shoe did not use Louboutin's mark (as modified) and affirmed the district court's denial of a preliminary injunction on the basis that the use was not infringing. The court declined to address either the likelihood of confusion or whether the red shoe mark is functional.
For a more detailed discussion of this litigation, see Practice Note, In Dispute: Louboutin v. YSL.
Court documents: