can you trademark a color?

This is a piece I had written for the school magazine, but didn't make it in. I now share it with those interested in the topic. Enjoy, Dari.
 
"Red is obviously such a stimulating color, and it has so many connotations." --P. J. Harvey
Christian Louboutin sued Yves Saint Laurent over the use of the red sole on their shoes and the mixed connotations that they may create. Other brands and corporations have been able to obtain color trademarks, such as the United Postal Service (UPS) brown and Tiffany’s robin-egg blue. While it’s true that many identify Louboutin by its signature sole, the question remains. Can Louboutin hold exclusive rights to red?

Without question, Christian Louboutin has put much effort into creating the often sought-after Louboutin red sole. As legend has it, the designer created the sole in 1992 by painting the underside of a shoe with red nail varnish, finding the resulting footwear so captivating as to include it on his designs thereafter. His shoes have been adored by celebrities and madame tout le monde alike. They have faithfully supported his product for years, taking him from a small French shoe designer to international fame in his own right. In January 2008, the United States Patent Trade Office (PTO) granted the “Red Sole Mark” trademark with the official document stating:

“The color(s) red is/are claimed as a feature of the mark. The mark consists of a lacquered red sole on footwear. The dotted lines are not part of the mark but are intended only to show placement of the mark.”

The description was accompanied by a drawing of a sandal with a red colored sole and no additional distinguishing features.

Louboutin took issue with the red soles which Yves Saint Laurent’s Cruise 2011 Collection featured on several all-red models of its Tribute, Tribtoo, Palais and Woodstock shoe designs. Each model was noted for its distinctive YSL form. Though YSL produced an all-red Tribute sandal in 2008, Louboutin did not object to the shoe at that time.

The validity of Louboutin’s trademark has come under question. It is clear the red sole is an identifier of the Louboutin brand, but is it protected under current statutes? In fashion, this is difficult to answer. Because the seasonal cycle for innovation runs in a minimum of two cycles per year, judges are reluctant to give fashion designers similar protections for their work as have been enjoyed by other industries in the past, notably the pharmaceutical and engineering industries. The heart of American trademark law lies with the Landham Act, enacted in 1946 and last updated in 2005. According to this act, trademark refers to

“any word, name, symbol, or device, or any combination thereof which a person has a bonafide intention to use in commerce . . . to identify and distinguish his or her goods . . . from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.”

The issue at question is the application of the functionality doctrine to the Red Sole Mark which provides Louboutin a way to trademark a feature which is not related entirely to its function as a brand identifier. Does the red sole serve a purpose outside of being a brand identifier?

Louboutin filed action against YSL for trademark infringement and counterfeiting, false designation of origin and unfair competition, trademark dilution, as well as New York state law claims for trademark infringement, trademark dilution, unfair competition and unlawful deceptive acts and practices. YSL counter-sued seeking the cancellation of the Red Sole Mark on the grounds that it is not distinctive, ornamental, functional, and was secured by fraud on the PTO, as well as damages for tortious interference with the business relations, and unfair competition. In sum, while Louboutin was suing for protection of their trademark, YSL argued that Louboutin had no right to their mark, and that they were cornering the market in trying to assert control over the usage of the red sole.

The case was argued at the Southern District Court of New York before Judge Victor Marrero who was not keen to the argument presented by Louboutin. While he understood the efforts and perhaps the cultural value of the Louboutin brand, he was reluctant to grant the protection Louboutin needed for the case. In his decision on the case, Marrero attempts to provide qualifications to granting trademark to colors:

“Color can meet the legal requirements for a trademark if it ‘acts as a symbol that distinguishes a firm’s goods and identifies their sources, without serving any other significant function.’” 

The Louboutin red sole is an essential part of the shoe, not because it is red, but because the sole is a necessary component to the making of a functional shoe. Marrero raises an interesting point when he questions the functionality of color in fashion, where it is deemed a must by the majority of wearers today. He refers to the Qualitex case where the plaintiff used a green-gold color in its packaging of dry cleaning pads, citing that the functionality doctrine forbids the use of a product’s feature as a trademark where doing so will put a competitor at a significant disadvantage because the feature is essential to the use or purpose of the article or affects its cost of quality. Marrero sets forth that color has been deemed as functional in certain aspects and therefore cannot be protected. The fact that Louboutin did not try and protect their Red Sole Mark when YSL previously made shoes with red soles is particularly damaging, showing that Louboutin may not have a clear idea of when one is infringing on his mark and when one is not. It is damning to see his own words used against himself, as his belief that red is “engaging,” “sexy,” and attractive to men are all non-trademark function in Marrero’s eyes. Reserving the right to a red sole to Christian Louboutin and reserving the right to give “a touch of beauty to common and necessary things” may be detrimental to the market as a whole, allowing Louboutin an advantage  over his competition.

Many find that this was not the moment to challenge Yves Saint Laurent on usage of the Red Sole Mark. The Louboutin customer can easily distinguish between the two brands. As YSL’s shoes in question are completely red following the monochrome style of the collection, the assertion made by Louboutin of confusion between the shoes or their respective houses is even weaker. Though Judge Marrero did not completely nullify the Red Sole trademark, he came close, and that may open up the flood gates for other designers to take advantage of the red sole. But, for savvy shoppers of fashion, a Louboutin is more than just the red sole, and that meaning is what will distinguish Louboutin from others that attempt to use the red sole.

For those who feel a certain attachment to Christian Louboutin, it’s hard to say no to his real belief that his red soles are signature to his brand and protected by trademark. Fans of both fashion houses may have trouble taking sides. It’s difficult to comprehend the situation and the legalities and rules surrounding trademarks, but it is equally difficult to disprove the logic of Judge Marrero, who has taken his guidance directly from American legal texts and jurisprudence. A gut feeling is not enough for Louboutin to win this case. Though proposed laws in the United States could provide more solutions to Louboutin in regards to their trademark, it is not necessarily seen as positive legislation for the fashion industry, which enjoys the recycling of ideas, trends, and iconic pieces. It is yet to be seen the fate of the Louboutin v. YSL case and its significance in the fashion industry as it is now being heard before the appeals court of New York.