Color Trademarks Prevail Over Aesthetic Functionality
The Second Circuit has determined that fashion designer Christian Louboutin’s use of a distinctive red sole can serve as a trademark as long as it contrasts with the other colors of the shoe. In doing so, the Second Circuit reversed the lower court’s ruling that color can never be a valid trademark for fashion items. (See Christian Louboutin S.A. v. Yves St. Laurent America Holding, Inc.)
By way of background, Louboutin is the owner of a U.S. federal trademark registration for the use of “lacquered red sole[s] on footwear.” Further, there is no dispute Louboutin’s red soles are widely recognized and have acquired secondary meaning.
Despite these facts, the lower court relied on the doctrine of aesthetic functionality to invalidate and cancel Louboutin’s Registration. The District Court argued that “[t]here is something unique about the fashion world that militates against extending trademark protection to a single color.”
The Second Circuit began its analysis by citing to multiple examples where color has been upheld as a valid trademark. As one example, the Court cited to the Owens-Corning decision wherein the Federal Circuit explained, “[Owens-Corning’s] use of the color ‘pink’ performs no non-trademark function, and is consistent with the commercial and public purposes of trademarks” and therefore “serves the classical trademark function of indicating the origin of the goods, and thereby protects the public.”
Following the Federal Circuit’s lead, the Second Circuit rejected the district court’s per se ban on colors acting as trademarks in the fashion industry and reinstated Louboutin’s federal registration. The Court explained, “Louboutin’s marketing efforts have created a “brand with worldwide recognition,” and “[b]y placing the color red in a context that seems unusual, and deliberately tying that color to his product, Louboutin has created an identifying mark firmly associated with his brand. . .”
While the Court recognized the validity of Louboutin’s red sole mark, it restricted its scope solely to contrasting red soles. According to the Court, Louboutinfailed to establish the requisite distinctiveness and/or secondary meaning when the red sole does not contrast with the upper part of the shoe (For example, a monochromatic red shoe.)
Despite rejecting the lower court’s per se ban based on the aesthetic functionality doctrine, the Second Circuit clarified that the aesthetic functionality doctrine remains a viable defense. According to the Court, the aesthetic functionality doctrine is applicable “where protection of the mark significantly undermines competitors’ ability to compete in the relevant market.”
However, the Court avoided having to conduct an aesthetic functionality analysis because Yves St. Laurent’s accused shoes were monochromatic (non-contrasting) and therefore outside the restrictions placed on Louboutin’s trademark by the Court.
While the scope and boundaries of the aesthetic functionality defense remain to be explored, the Second Circuit’s decision is a victory for fashion designers seeking to use color as a brand identifier.