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September-October, 2012 Vol. 102 No. 5 Back to TMR Main Page
Coloring Outside the Lines in the Name of Aesthetic Functionality: Qualitex, Louboutin, and How the Second Circuit Saved Color Marks for Fashion
In Christian Louboutin S.A. v. Yves Saint Laurent America
Holding, Inc
., the United States Court of Appeals for the Second Circuit addressed the question of “whether a single color may serve as a legally protected trademark in the fashion industry and, in particular, as a mark for a particular style of high fashion women’s footwear.” In its decision, the court reviewed the unprecedented holding of the United States District Court for the Southern District of New York that created a per se rule that forbade color trademarks in the fashion industry. The district court found that “[b]ecause in the fashion industry color serves ornamental and aesthetic functions vital to robust competition, . . . Louboutin is unlikely to be able to prove that its red outsole brand is entitled to trademark protection, even if it has gained enough public recognition in the market to have acquired secondary meaning.” The Second Circuit reversed the district court’s
decision regarding the protection of color marks in the fashion
industry. It held that the registered trademark of Christian
Louboutin S.A. (the “Red Sole Mark”), which consists of “a red, lacquered outsole on a high fashion woman’s shoe,” had acquired secondary meaning as a distinctive symbol that identified the Louboutin brand and was entitled to trademark protection. But the Second Circuit nevertheless affirmed the order of the district court denying the injunction of Yves Saint Laurent’s sale of a monochromatic red shoe with red upper and bottom soles. This important decision analyzed and addressed how color trademarks are considered under the Lanham Act. In a complicated and difficult case that had raised much hue and cry in the fashion world and intellectual property community, the Second Circuit reconciled the law with the district court’s decision. 
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