Heart and Sole: Christian Louboutin Still Seeing Red Months After Red Sole Trademark Victory - Fordham Intellectual Property, Media & Entertainment Law Journal
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Heart and Sole: Christian Louboutin Still Seeing Red Months After Red Sole Trademark Victory

Heart and Sole: Christian Louboutin Still Seeing Red Months After Red Sole Trademark Victory

Fans of Christian Louboutin’s distinctive shoes got to kick up their heels and rejoice this past September when the U.S. Court of Appeals for the Second Circuit upheld the brand’s trademark on its lacquered red soles, but unfortunately for the fashion world the controversy rages on between Louboutin and trademark challenger Yves Saint Laurent.

Paris-based Louboutin sued YSL in U.S. court in April of 2011 after YSL released a pair of entirely red shoes as part of its 2011 resort collection.  Louboutin claimed that the red soles on YSL’s monochromatic shoes were identical to the calling card for which Louboutin obtained trademark protection in the U.S. in 2008.  Louboutin has been using red soles on his shoes since 1992 when, underwhelmed by a pair of shoes that “lacked energy,” he used red nail polish borrowed from his assistant to spice up their soles.

In August of 2011, SDNY Judge Victor Marrero denied Louboutin’s request for a preliminary injunction against the sale of YSL’s red-soled shoes, calling a trademark on a color unfair because color “serves ornamental and aesthetic functions vital to robust competition,” even if consumer recognition of Louboutin’s red soles constitutes a secondary meaning.  Louboutin appealed to the Second Circuit, resting its case on two main prongs: the registered trademark, and the potential for consumer confusion.  Louboutin’s lawyers noted that Louboutin and YSL shoes have similar clientele, are often sold in close proximity in department stores, and that pre-point-of-sale loss of customers is a possibility if consumers see and dislike red-soled YSL shoes and hold Louboutin responsible for the offending shoes.

In a September 2012 decision that managed to give both sides the impression that they’d won, a three-judge panel for the Second Circuit found the red soles to be a “distinctive symbol that qualifies for trademark protection,” but only for the purposes of shoes where “[the] lacquered red outsole . . . contrasts with the color of the adjoining remaining portion of the shoe (known as the ‘upper’).”  Thus, competing brands like YSL cannot infringe Louboutin’s trademark red soles with red-soled shoes where the red color extends to both the sole and the upper portion.  YSL dropped its counterclaims in October and it seemed that things were back to business as usual in the realm of luxury shoes.

Louboutin, however, remains unsatisfied.  In response to a notification from the U.S. Patent and Trademark Office that the red sole trademark would be modified in accordance with the Second Circuit’s opinion, Louboutin’s counsel in the first week of 2013 petitioned the USPTO for broader scope.  Louboutin’s counsel has proposed that the trademark be defined as “a lacquered red outsole on footwear that contrasts with the color of any visible portions of the shoe.”  This would prevent competing designers from selling shoes with red soles where the majority of the shoe is red, and the accepted fair use of the red soles would be limited to shoes that are entirely red.

It should come as no surprise that a designer whose empire is build upon his attention to a previously ignored detail of shoe construction is concerned about the nuances of his trademark protection.  Now it’s up to the USPTO to make a (hopefully final) determination on the ongoing red sole controversy.

Claire Murphy