The US Court of Appeals for Second Circuit has rendered their decision which reversed the lower court’s decision. They held that Louboutin’s red sole is a valid trademark and that it had acquired secondary meaning.
This couldn’t have come at a more opportune time. Just last month, the US Customs seized fake Louboutins about $18 m in estimated retail value. This highlights the massive counterfeiting of Louboutins and emphasizes the need for protection of the red sole mark.
However, the Court modified the red sole registration and held that its secondary meaning extends only to a situation where “the lacquered red sole contrasts in color with the adjoining ‘upper’ of the shoe.” It follows that YSL’s monochromatic red shoe, albeit with a red sole, does not infringe upon Louboutin’s red sole trademark, as modified by the Court of Appeals.
The Court reiterated that a single color can serve as a trademark, regardless of the industry involved. Hermes and Tiffany’s can now rest easy that their single color marks are valid, and cannot be attacked on the basis of the Louboutin lower court decision. The same goes for United Parcel Service's brown and 3M’s yellow post-it notes.
This does not mean that brand owners should make haste and file for registration of single color marks before all the available colors in the world become valid trademarks. The decision did not bestow inherent distinctiveness unto single colors. The eligibility of single colors for use as a trademark only exists if it has acquired secondary meaning- if it acts as a strong identifier of source of the goods.
In evaluating whether a single color has acquired secondary meaning, factors to consider include: “(1) advertising expenditures, (2) consumer studies linking the mark to a source, (3) unsolicited media coverage of the product, (4) sales success, (5) attempts to plagiarize the mark, and, (6) length and exclusivity of the mark’s use.” For Louboutin, the Court of Appeals cited “high-stakes commercial markets and social circles” where the red sole became closely associated with Louboutin, “unsolicited media attention to the red sole,” as well as François-Henri Pinault’s (Chief Executive Officer of YSL’s parent corporation) recognition of “the notoriety of the distinctive signature constituted by the red sole.”
Indeed, fashion designers require unfettered use of the entire pantone catalog of colors. Even if the nature of the fashion industry calls for functional uses of color, a single color can nevertheless function as a trademark, provided it acquires secondary meaning.
Karla Aspiras is a Trademark Analyst at Interbrand NY.