In a decision that is captivating the fashion industry, the Second Circuit held that a single color can serve as a legally protected trademark. Specifically, the color red used on the sole of luxury shoe designer Christian Loubotin’s shoes is protectable as a trademark. Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc., 11-3303-cv (2d Cir., Sept. 5, 2012).

Louboutin’s signature line of high-fashion women’s footwear utilizes a high-gloss, red-colored bottom, and costs approximately $1,000 for a pair. Louboutin explained that “[t]he shiny red color of the soles has no function other than to identify to the public that they are mine.” In 2008, Louboutin registered the red sole as a trademark with the United States Patent & Trademark Office, based upon the strength of the asserted recognition of the red-soled shoes in the fashion industry.

In 2011, Yves Saint Laurent (YSL) attempted to market a line of women’s shoes that utilized a red sole, which allegedly infringed the Louboutin red-sole trademark. Last year Louboutin sued YSL under the Lanham Act and sought a preliminary injunction. YSL counterclaimed to cancel Louboutin’s federal trademark registration. Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., 778 F. Supp. 2d 445, 451 (S.D.N.Y. 2011). The district court in that case denied Louboutin’s motion for a preliminary injunction and ruled that a single color can never serve as a trademark in the fashion industry, because color is an element of fashion design. The court also declared Louboutin’s trademark registration to be invalid.

On appeal, the Second Circuit disagreed, finding that “no per se rule governs the protection of single-color marks in the fashion industry.” Specifically, the Second Circuit held that the district court’s decision was inconsistent with the seminal Supreme Court decision in Qualitex Co. v. Johnson Products, Inc., 514 U.S. 159 (1995), which holds that the Lanham Act permits registration of a trademark or trade dress that consists, purely and simply, of a color, if it distinguishes a company’s goods and identifies their source without serving any other significant function. The Second Circuit concluded that Qualitex requires an “individualized, fact-based inquiry into the nature of a trademark and cannot be read to sanction an industry-based per se rule” and that the Qualitex court did not intend that all fashion designers must be allowed to use any aesthetic element at all, but only that they must be allowed to compete fairly in the marketplace.

The Second Circuit then went on to find that Louboutin’s use of the color red on shoe soles had indeed acquired secondary meaning that causes it to be uniquely associated with Louboutin’s brand and evidence in the record demonstrated that Louboutin’s marketing efforts created a brand with worldwide recognition. However, the court limited its holding by ruling that the lacquered red outsole qualifies for trademark protection only when applied to a shoe with an upper contrasting color, and instructed the Patent & Trademark Office to limit Louboutin’s registration accordingly. Therefore, the YSL shoes that consisted of a red sole and red upper were not infringing and confusingly similar.

In sum, this case demonstrates that a single color is protectable as a trademark. Of importance, it provides instruction as to the importance of using the color consistently and prominently so that the public sees the color to symbolize and identify a brand.