What’s Red and Blue and Litigated All Over? Louboutin, Tiffany, and the Future of Trademarked Colors

Sunday, November 6th, 2011 at 1:49 pm, by Katherine Gorman

Can a fashion designer legally own the trademark to a particular color?  Christian Louboutin’s signature red-soled shoes, developed by the French luxury fashion designer and made popular by well-heeled celebrities and socialites, are now the subject of ongoing trademark litigation centered around this very question.  In October, Louboutin gained a powerful ally in its trademark infringement case against Yves St. Laurent—the famous jewelry company Tiffany & Co.

Louboutin’s Trademark Infringement Suit

Louboutin has been painting the soles of his shoes red since 1992.  But he didn’t file for trademark protection in the United States until 2007.  In his petition to the court, he attested that he selected the color red because it is “engaging, flirtatious, memorable, and the color of passion.”  In 2008, the U.S. Patent and Trademark Office gave Louboutin a registered trademark for shoes with glossy red-bottoms.

In early 2011, Louboutin filed suit against Yves St. Laurent (a subsidiary of the French holding company PPR) for trademark infringement, false designation of origin, and dilution based on shoe models in YSL’s 2011 collection.  Each of these models has a bright red sole, as part of a design in which the shoe is entirely red.

A recent ruling suggests that Louboutin might face difficulties in protecting his trademarked red soles.  This past August, Judge Victor Marrero of the Southern District of New York denied Louboutin’s request for an injunction to prevent Yves St. Laurent from selling red-soled shoes in its 2011 collection.  Judge Marrero did not dispute that the red soles identify the shoes as being produced by Louboutin.  However, he said that to succeed on the claim for trademark infringement, Louboutin would need to show that his red sole mark merits protection and that YSL’s use of the same or sufficiently similar mark is likely to cause consumers confusion as to the origin of YSL’s shoes.

Can Color Be Trademarked?

Color alone may be protected by a trademark if that color has obtained a “secondary meaning” and therefore identifies and distinguishes a particular brand.  However, color is not protectable when it is “functional”—if it is essential to the use or purpose of the products, or affects the cost or quality of the product.

Color is regularly trademarked in industrial uses, where the color serves only to distinguish the make of a product—for instance, pink fiberglass insulation or green-gold for pads on drycleaning presses.   In some industrial markets, products are so standardized in shape, design, and composition that color serves to distinguish the product and identify the brand, and is therefore protectable.  The inquiry becomes more difficult when it concerns the fashion industry, where aesthetic details serve a more fundamental purpose.

Under the Lanham Act, fashion designers can obtain a color trademark if that color is used in a distinct pattern or combination of shades.  In his ruling, Judge Marrero cited to trademarks obtained by Louis Vuitton for its LV monogram and Burberry for its classic beige plaid print.  However, he distinguished those trademarked complex uses of color from Louboutin’s trademark for a vaguely described “lacquered red” shoe sole.  The judge also reasoned that because adding the lacquer to the shoe increases the cost of production, and thus the retail price, it is more likely to have a functional value.

Having concluded that the red soles served a function other than acting as a source identifier, and that they affected the cost and quality of the shoe, the court then turned to whether granting trademark rights to Louboutin would significantly hinder competition.  The judge emphasized the artistic nature of the fashion industry, analogizing the case to a hypothetical dispute between Monet and Picasso over a shade of blue, and concluded that to give control over a color to a single artist would hinder artistic innovation and harm competition.  Judge Marrero reasoned that if Louboutin’s trademark were to be upheld, it could lead to endless fashion wars as designers raced to trademark particular colors, thereby hindering competition in the realm of high fashion.  Color serves both ornamental and aesthetic functions vital to robust competition in the fashion industry, and thus a single color cannot be a protectable trademark for fashion items.

Judge Marrero said it was unlikely that Louboutin would succeed on its trademark infringement and unfair competition claims.  Because of doubts about whether the trademark Louboutin had obtained was protectable, the court refused to grant the preliminary injunction Louboutin had requested.

What Does This Decision Mean For Tiffany & Co, And Other Companies With Trademarked Colors?

It is no surprise that Tiffany & Co., with the fate of its eponymous “Tiffany Blue” hanging in the balance, has filed an amicus brief in support of Louboutin.  Tiffany Blue was trademarked in 1998.  The International Trademark Association also plans to file a brief in support of Louboutin, and has asked the Second Circuit for a time extension to do so.

In their brief, Tiffany argues that the District Court adopted an overly broad per se rule that a single color can never constitute a protectable trademark in the fashion industry and that the language of the Lanham Act does not support such an interpretation.  Tiffany also challenged the court’s conclusion that the red sole mark was functional, saying that the court relied on sweeping overgeneralizations about the fashion industry, without adequate analysis of whether the mark is essential to the use and purpose of the shoe, raises quality, or lowers cost.

It makes sense that Tiffany, and others, are concerned about the implications if Louboutin’s trademark is found to be invalid.  Color can be trademarked if it is part of a complex pattern, as used in the Burberry plaid design or the Louis Vuitton monogram. However, Tiffany blue is a solid color.  According to the Second Circuit, for Tiffany’s trademark to be protectable, the trademarked color must serve no functional purpose.  On a spectrum between trademarking a color for fiberglass insulation and trademarking a color for a luxury good, Tiffany seems closer to the latter category than the former.  Tiffany could distinguish its trademark in that Louboutin’s red sole is a part of the product itself (the shoe), whereas Tiffany’s blue is a part of the overall packaging that tells people where the products are from.  It is understandable that Tiffany would prefer not to have to make such an argument.

Tiffany is not the only company with a trademarked color.  Veuve Cliquot owns the trademark for the shade of orange that adorns its bottle labels.  As mentioned before, trademarked colors also extend beyond luxury good companies.  Owens-Corning owns a trademark for the pink color of its fiberglass insulation products.  If Louboutin’s trademark were found to be invalid what would this mean for other trademarked colors?  Under the court’s reasoning, color trademarks for industrial goods are likely to be upheld.  But could a prohibition against trademarked colors be extended from shoes, to all forms of fashion, to all luxury products?  It is unclear how far such prohibitions could extend, but it is undeniable that this case could certainly have far-reaching implications on non-related parties.

Louboutin’s lawyers have appealed the ruling.