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INTA Bulletin


January 1, 2012 Vol. 67 No. 1 Back to Bulletin Main Page

INTA Steps Into Red-Soled Shoe Trademark Case


To ensure that courts give proper recognition to rights conferred by trademark registrations under U.S. law and follow precedent protecting trademarks that also have aesthetic attributes, INTA filed an amicus brief on November 14, 2011, in a widely watched case involving Christian Louboutin’s registered Red Sole trademark for women’s high-fashion designer footwear.

The case, Christian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc., filed in the U.S. District Court for the Southern District of New York, centers on Louboutin’s claim that shoes Yves Saint Laurent produced entirely in red infringed and were likely to dilute the Red Sole mark, U.S. Registration No. 3,361,597, consisting of “a lacquered red sole on footwear” and covering “women’s high fashion designer footwear.”

In a 32-page order dated August 10, 2011, District Judge Victor Marrero denied Louboutin’s motion for a preliminary injunction, stating “Louboutin’s claim to ‘the color red’ is, without some limitation, overly broad and inconsistent with the scheme of trademark registration established by the Lanham Act” and that “Awarding one participant in the designer shoe market a monopoly on the color red would impermissibly hinder competition among other participants.”

The judge explained his reasoning through a “fanciful hypothetical” lawsuit by Picasso against his fellow artist Monet for depicting water using “a distinctive indigo that Picasso claims was the same or too close to the exquisite shade that Picasso declares is ‘the color of melancholy,’ the hallmark of his Blue Period.” Like the artists’ use of blue, the court said, Louboutin’s use of “the color red” was ornamental and functional, and not entitled to trademark protection.

In its  amicus brief in Louboutin’s appeal to the U.S. Court of Appeals for the Second Circuit, INTA argued that the District Court committed two key errors that, if uncorrected, could have adverse consequences for brand owners and consumers alike, making it harder to stop infringers and counterfeiters.

INTA first noted that the court misinterpreted the mark as a broad claim to “the color red,” when in fact the registration describes it as a “lacquered red sole.” That error led to the court’s “fanciful hypothetical,” INTA argued, as a result of which the court disregarded the presumption of validity the federal registration confers on the mark under Section 7 of the U.S. Lanham Trademark Act.

INTA then explained that the court compounded its errors by applying the much-criticized doctrine of aesthetic functionality, and by failing to follow Second Circuit and U.S. Supreme Court authority under the doctrine, which require proof that recognizing the design as a trademark would harm competition.

INTA also argued that the court’s analogy to a “fanciful hypothetical” lawsuit by Picasso against Monet over the color blue ignored a long history of precedent that marks are legally protected even if consumers are also drawn to them for other reasons, like their aesthetic appeal or to show allegiance to a team.

John Crittenden of Cooley LLP in San Francisco and Susan Hightower of Pirkey Barber LLP in Austin, Texas, USA, wrote INTA’s brief, assisted by other members of the U.S. Subcommittee of the International Amicus Committee.


Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2012 International Trademark Association