Limitation on Color Trademarks in the Fashion Industry

In 1992, shoemaker Christian Louboutin began using red lacquer soles on some of its shoes.  In 2008, the red soles were registered as mark in the US Patent and Trademark Office, and on January 1, 2008, number 3, 361,597, the “red sole mark” came to life.

In 2012 Louboutin sued Yves St. Laurent (“YSL”).  They were seeing red  (pun intended) over the recent Yves St. Laurent 2011 Resort collection, which included red-soled shoes, the Louboutin signature brand detail.  Louboutin filed a trademark action against YSL, which YSL prominently countered with a counter-suit seeking cancellation of the Louboutin trademark registration.  Louboutin responded with a request for a  preliminary injunction temporarily preventing YSL from selling the shoes until the dispute was settled.  The district court initially denied Loboutin’s request largely on the basis that . . .”in the fashion industry color serves ornamental and aesthetic functions vital to robust competition  . . . However, “Color alone “ sometimes ” may be protectable as a trademark, “where that color has attained ‘secondary meaning’ and therefore identifies and distinguishes a particular brand (and thus indicates its ‘source’).” Conversely, color may not be protectable where it is “functional,” meaning that the color is essential to the use or purpose of the product, or affects the cost or quality of the product.”

Affirming in part and reversing in part, the 2nd circuit stated that

We conclude that the District Court’s holding that a single color can never serve as a trademark in the fashion industry, Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., 778 F.Supp.2d 445, 451, 457 (S.D.N.Y.2011) (“Louboutin”), is inconsistent with the Supreme Court’s decision in Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 162, 115 S.Ct. 1300, 131 L.Ed.2d 248 (1995) (“Qualitex ”), and that the District Court therefore erred by resting its denial of Louboutin’s preliminary injunction motion on that ground. We further conclude that Louboutin’s trademark, which covers the red, lacquered outsole of a woman’s high fashion shoe, has acquired limited “secondary meaning” as a distinctive symbol that identifies the Louboutin brand. As explained below, pursuant to Section 37 of the Lanham Act, 15 U.S.C. § 1119, we limit the trademark to uses in which the red outsole contrasts with the remainder of the shoe (known as the “upper”). We conclude that the trademark, as thus modified, is entitled to trademark protection. Finally, we conclude that, because the monochrome design employed by YSL is not a use of Louboutin’s modified trademark, we need not, and indeed should not, address whether YSL’s use of a red outsole risks consumer confusion or whether the Louboutin mark, as modified, is “functional.” 

In short, the Circuit Court rejected the District courts argument that that clothes are inherently aesthetic, and that the addition of an aesthetic feature like the color is merely a function of the design and therefore not protectable as a trademark, however found that the use of the color in this context has to be fairly limited.

While the red sole has become synonymous with Louboutin, with women paying  $595- $1000 for a pair of these status symbol shoes, the ability to take an entire color off of the pallet of future designers would be far reaching and stifle the creativity contained in future catalogs and runways.

Thanks to Sara Harrison for her assistance with this post.

Edited 10/27/14

Options When Taking Down Counterfeiters – $164 million awarded in Tory Burch lawsuit

Earlier this month, the U.S. District Court, Southern District of New York awarded a default judgment to clothing designer Tory Burch LLC in its trademark counterfeiting and cyber-squatting case against  232 websites which sold copies of Burch’s handbags, flats, and accessories.  After none of the 232 defendants answered the complaint, the Court awarded damages of $164 million and ordered that the counterfeit websites be turned over to Burch. The $164 million is the largest settlement of this type.  Additionally, the Court used the process provided in similar cases involving The North Face and Ralph Lauren which ordered third-party payment facilitators, such as PayPal, to disgorge any money in Defendants’ accounts.    While it is not expected that Burch will ever recover the full judgment in this case, the ability to take possession of the infringing domain names, along with the ability to freeze related financial accounts, gives the plaintiff a great tool in combating future infringement and sends a strong warning on the repercussions of counterfeiting goods.

Websites selling counterfeit designs are a huge problem for the fashion industry because of the damage to their profits and brand integrity.  While some argue that the consumers who buy the knock-off are not the same as those who will buy the real-deal, this argument avoids the fact that exclusivity of the designs is one aspect of what give the marks of these designers value.   When thousands of sub-par handbags are suddenly available, not only is the quality of the product related to the counterfeited goods put into question, but so is the exclusive aura surrounding the product.

While the actual designs of most manufacturers are not protected by copyright (clothing is not protectable subject matter), holding the product out as being sourced from the original designer violates their trademark rights.  Counterfeiters be aware – the courts are looking at new and more aggressive ways of taking you down and preventing you from profiting from harming the trademark rights of the designers you are ripping off.

Thanks to Sara Harrison for her assistance with this post.

Trademark Enforcement

When thinking about whether or not to enforce a trademark, keep in mind the purpose of having the mark is to serve as an identifier of the source of the good or service for consumers. With this in mind, in order to preserve your own rights to a mark you have to try to maintain its strength as an identifier for your product.

In the event you have adopted a mark, an important part of maintaining it is to monitor the marketplace for others using identical or similar marks for the same or similar services. In the event you locate someone using the mark in a way that might cause consumer confusion, steps should be taken to eliminate potentially weakening of the mark. Consideration should be given to sending a letter advising the infringing user of your prior use and demanding that they stop using the mark (sometime referred to as a cease and desist letter). Before sending such a letter, you should consider discussing the matter with an attorney for their help in evaluating the mark you are seeking to protect – there is nothing worse than demanding someone else stop using a mark, only to find out that they have a greater right to use the mark than you do. If the infringer fails to heed your warning, you will need to evaluate how widespread the infringement is and make a business decision about whether to proceed to litigation.

Trademarks and Pepper Potts – Is Iron Man a good or a service?

Warning: this may be one of my more nonsensical posts.

After seeing Iron Man 2 this week, I felt compelled to speak out about the misinformation propagated by Pepper Potts. During a scene in which Tony comes into Pepper’s office, we overhear Pepper talking to an unidentified party about the suit. In the conversation (which I am editing to avoid spoiling it for anyone who went to see Robin Hood this weekend instead), Ms. Potts repeatedly references the intellectual property right in the suit being based on trademark law. My beef? It is clear from the story line, that the issue is one of patent law, not trademark.

Trademarks generally serve two purposes: 1) to provide consumers with an assurance as to the source of goods or services; and 2) to protect the value that a business receives from creating and marketing a product. Patents, on the other hand, are intended to protect inventors by giving them the sole ability to utilize or license their creations. While the suit could serve as a trademark for Tony Stark’s services as a super hero, it should be clear to anyone that has seen the movie that the discussion in question was more properly framed as an issue of patent law.

Am I being nit-picky? Well . . . Yes. But as a copyright and trademark attorney, Pepper’s lack of understanding ruined the entire film for me – or at least it distracted me for 5-10 seconds.

When is a farm boy just like any other farm boy?

When is a farm boy just like any other farm boy? That’s the question at the heart of a recent Federal Circuit decision (Odom’s Tennessee Pride Sausage, Inc. v. FF Acquisition, LLC, No. 09-1473) involving a decision by the USPTO to grant a trademark registration to FF Acquisitions (a SuperValu company) over the objection of Odom (a retail food conglomerate).

Despite the fact that the registration in question was merely adding the body onto an already registered mark making up the torso of a farm boy (mark on the right), Odom was concerned that the mark was now likely to confuse consumers and opposed the registration, citing its own registrations. Even though Odom argued that there were other factors to be considered under the DuPont test for likelihood of confusion, the USPTO and the Circuit court summarily dispatched the complaint by noting that the registered marks differed in the size and shape of the hands, styles of hats, shoes on the feet, and apiece of straw hanging from his mouth.

In its appeal to the Federal Circuit, Odom argued that the USPTO was wrong in basing its decision that there was no likelihood of confusion based a single DuPont factor and not considering other factors. The legal question was whether consideration of the single DuPont factor involving similarity of the marks was enough for the court to conclude that there was no likelihood of confusion and to allow registration – it was. The Circuit court went further and noted that even if the USPTO had considered all the other factors, the dissimilarity of the marks was , by itself, a strong enough reason to deny Odom’s claims and to allow registration of FF Acquisitions’ mark.

This opinion is a reminder that trademarks are limited and do not create ownership in an entire concept. The focus when adopting a mark is its overall distinctiveness. A mark cannot be deconstructed into individual pieces for the purpose of eliminating distinctive qualities, because that is not what a consumer does. It is the overall impression that makes the difference.

Baseball Uniforms as Trade Dress: MLB v. Donruss

An interesting case was recently filed involving baseball card manufacturer Don Ross and Major League baseball. Among several counts involving, minor league players, retired players and current players is a claim that that Donruss inappropriately used the trade dress of the former Major League players. Interestingly, the complaint seems to indicate that there isn’t a claim of trademark infringement related to the cards with the former players. While it is not spelled out in the complaint, it appears that the claim is that even though the logos have been removed from the pictures of these players (thereby avoiding the trademark claim) that because the colors and other parts of the uniform are visible, the trade dress has been infringed.

It is standard practice to remove the logos on licensed memorabilia of sports figure, but if this case plays out in favor of MLB, it would appear players will have to be completely stripped of any identifying indicia to avoid the claims by MLB. Trade dress must be distinctive and non-functional ~ while I will admit to not being a major sports fan, but it seems to me that proving these elements is going to be a difficult task for MLB. If in fact MLB is claiming a trade dress in the uniforms and is successful, it raises all sorts of issues for merchandisers, former players, and sporting good manufacturers.

The complaint has been loaded online at

Deceptive Hot Dogs: Food Trademarks

Found in a complaint in a recently filed trademark case:

    “The hot dog, synonymously identified over the years by a host of names including frankfurter, sausage, frank, wiener, dog and others, has a rich and long history in the United States.”

Ok, I confess, I have no reason for posting this other than the fact that it amuses me that the attorney who wrote this sat down to write out synonyms for hot dogs. Some other synonyms include: