As fashion week begins in New York, the Court of Appeals for the
Second Circuit issued an important ruling that may help fashion
creators in their efforts to obtain intellectual property
protection for fashion design. The appeals court held that
Christian Louboutin has a valid trademark in the red color used on
the outsoles of its women''s high-heeled shoes, but limited
its ruling to the shoes where the color of the soles contrasted
with the upper part of the shoe. In other words, the appeals court
refused to grant Louboutin protection for use of the color red in
general on its products.
The appeals court decision reverses the holding of a lower court
that a single color can never be protected by trademark in the
fashion industry. The appeals court ruled that it is possible for
color to be protected as long as the use of the color is not
functional. A product feature is functional if it is essential to
the use or purpose of the fashion article or if it affects its cost
or quality. And, even if a feature is not functional, it still will
not be accorded trademark protection if exclusive ownership would
have a significant impact on competition in the relevant
market.
Relying on U.S. Supreme Court precedent, the appeals court found
that it is possible for a single color to achieve secondary meaning
(i.e., serve as a source or brand identifier) and therefore be
entitled to trademark protection. Here, evidence of
Louboutin''s extensive use and promotion for twenty years,
as well as consumer survey evidence, made clear to the court that
it is the contrast between the color of the sole and the upper part
of the shoe that caused the sole of the shoe to "pop" --
distinguishing the Louboutin shoes from those of its
competitors.
As a general rule, courts (as well as the United States Patent and
Trademark Office) have been reluctant to accord trademark
protection to colors. This decision demonstrates that it is
possible for the use of color on a fashion item to achieve
trademark status. Given the very limited scope of copyright
protection for fashion items, this trademark ruling offers fashion
designers and manufacturers an additional business and legal
strategy. Designers and other owners of marks that feature a color
or colors may want to consider taking steps to register these marks
for trademark protection in the United States and elsewhere (as
Louboutin did for its red outsole) and to take other steps to
secure and protect potential trademark rights.
This alert provides general coverage of its subject area. We provide it with the understanding that Frankfurt Kurnit Klein & Selz is not engaged herein in rendering legal advice, and shall not be liable for any damages resulting from any error, inaccuracy, or omission. Our attorneys practice law only in jurisdictions in which they are properly authorized to do so. We do not seek to represent clients in other jurisdictions.
