French designer Christian Louboutin is one of the most exciting high fashion shoe designers in the world. Initially, he developed his now famous trademarked Red Sole Mark shoes.
by merely using red nail polish on the bottom of a shoe nineteen years ago. In August 2006, he registered the mark described as “The color(s) red is/are claimed as a feature of the mark. The color red appears in the design representing a stylized red sole.” This idea has now been launched into a shoe empire with stars and ordinary women laying down from $600 up to as much as $4,500. Mr. Louboutin’s shoes look especially good walking down the red carpets at award shows or at movie premiers. Stars such as Madonna, Sarah Jessica Parker, Angelina Jolie and Beyonce are often seen on these carpets wearing them. Jennifer Lopez even sang a song about her favorite shoes.
It is no wonder that Christian Louboutin and his companies sued rival designer Yves Saint Lauren (“YSL”) when that company developed a cheap knock-off brand of shoes with colored soles. Specifically, earlier this month, Mr. Louboutin sued YSL raising claims of trademark infringement, false designation of origin and unfair competition, trademark dilution and various state law claims in federal court in New York. YSL will likely argue that the trademark does not cover its shoes because the red soles on its shoes do not have a glazed look and its other pairs have different colored soles such as purple and green.
Will the court find that the Red Sole Mark has a secondary meaning that is protectable? Does the public associate the color with a single source? Other colors have been given color trademark protection, including my namesake Tiffany’s robin egg blue color. As you may recall from my prior blog post, Tiffany & Co. has been involved in its own trademark litigation. Moreover, UPS brown is another color trademark that includes the following registrations, here, here & here.
In the landmark decision Qualitex Co. v. Jacobson Products Co., 115 S.Ct. 1300 (1995), the Supreme Court found that the green-gold color of a dry cleaning press pad could be trademarked. Prior to this decision, those accused of infringement often had argued that color alone could not be trademarked, because such trademark status for colors would soon deplete the number of colors available for an object. Rejecting this argument, the Supreme Court stated that substitute colors would be available. As long as the color attained a “secondary meaning” so as to indicate its source, a color trademark is valid.
What other color trademarks are you aware of or you believe should be registered for a trademark?