Louboutin Loses in Court – Can A Company Trademark a Color?

After watching “Sex and the City” I learned that every woman yearns to own a pair of Christian Louboutin shoes. The most important part is the glossy vivid red sole. Louboutin explained that the red provides an energy which is engaging, flirtatious, memorable and passionate.
As a result of enormous sums of money spent on marketing campaigns, red sole shoes have become synonyms with Louboutin. Ask any woman and she will tell you that red goes with Louboutin. Louboutin has profited handsomely -projected revenue of approximately $135 million for 2011.
To the victor go the spoils, Louboutin saw the marketplace mimic its distinctive design. In response, the company applied for and received a trademark. It stated: woman’s footwear and the mark consists of a lacquered red sole on footwear.
Louboutin was shocked when it saw designer Yves Saint Laurent produce four woman’s shoes (Tribute, Tribtoo, Palais and Woodstock models) in its 2011 collection with red soles. In response, YSL claimed that it had been making shoes with red soles since 1970. Louboutin demanded that YSL take the shoes off the market and YSL refused.
Louboutin filed a federal lawsuit in the Southern District of New York alleging, in essence, stop selling red soles shoes because we have a trademark. YSL responded by saying you cannot trademark the color red.
Before the judge decided the claims, Louboutin asked the judge for an injunction to stop YSL from selling the red sole shoes and any other with the same design. This injunction would last for the duration of the suit. One of factors that the judge utilized to determine whether to grant or deny the injunction is: will Louboutin prevail?
The judge said no. He doubts that Louboutin’s trademark is valid and therefore the company will not succeed. He said so for the following reasons:
1. Fair Competition – Giving Louboutin exclusive control over the color red would hinder competition in the design and sale of all woman’s clothing;
2. Artistic Freedom – Other designers would be unable to express their passion and creativity because color is an indispensable medium to the fashion world;
3. Even Louboutin is unclear as to what shade of red it controls;
4. Louboutin states that it has a trademark on lacquered red; but YSL states that the color tone of its shoe is flat red;
5. If Loboutin claims red for the outer sole then what is to stop a competitor from claiming red for the inner sole, creating fashion wars?

In summation, the Judge had serious doubts that Louboutin possessed a protectible trademark. Despite the enormous popularity of Louboutin’s distinctive design the judge said the color red does not rise to the level of a trademark. The judge pointed out that Louis Vuitton’s LV (“LV” monogram combined in a pattern of rows with 33 bright colors) is a trademark because it is a distinct pattern, as opposed to Louboutin red sole which is merely a color. Thus, the Judge denied Louboutin’s request for an injunction. In doing so, he indicated that Louboutin will most likely lose their case. Louboutin appealed the judge’s denial to a higher court.

Attorney advertising. Prior results do not guarantee a similar outcome.

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