Where's CG? From Red Carpet to Red Soles

[jillian]

Second Circuit considers shoe designer's case to trademark a color

Fashion, while difficult to define, is easy to identify. Anyone walking down Rodeo Drive or reading the likes of Vogue readily recognizes a brand not only by its labels, but also by the style, shape or color of its collections. But in an industry where aesthetic appeal drives purchasing decisions, are these elements rightfully proprietary assets, or rather decorative elements available for all to use? The recent case of Christian Louboutin S.A. v. Yves Saint Laurent America Inc.,1 concerning a red sole on shoes, has ignited this tension, and has highlighted fashion designers' struggles to protect their valuable creations from others looking to emulate their appeal.

Supreme Court's Colorful History

The Supreme Court first recognized the protectability of color as a trademark in Qualitex Co. v. Jacobson Products Co.2 In considering whether green-gold used for a dry cleaning press pad serves a brand-identifying function, the Supreme Court stated that color "can act as a symbol that distinguishes a firm's goods and identifies their source, without serving any other significant function."3 Before this decision, it was often argued that granting trademark protection to colors would deplete the colors available to competitors. Qualitex rejected this depletion theory, reasoning that alternative colors are plentiful. That it would be legally difficult to determine whether use of a similar color on a similar product would confuse customers was also rejected, as such determinations are regularly made with respect to the similarity of words and symbols.4

http://www.newyorklawjournal.com/PubArticleNY.jsp?id=1202543340084

 

[California Girl]

I'm backing Louboutins! One must have one's trademark red soles! I'm right, aren't I, mo chara?

 

[jillian]

I'm backing Louboutins! One must have one's trademark red soles! I'm right, aren't I, mo chara?

i think the southern district judge had no clue what thenature of the red soles is. the court seemed to ignore the registration of the mark, which generally carries great weight initially. they were also overbroad in defining what was being sought and seemed to think louboutin was trying to keep st laurent from using the color red. obviously, they need an education in shoes. if it were my case, i'd argue that the laquered red soles made louboutins instantly identifiable so had taken on a secondary meaning beyond the color. I would also point out that the use of laquered red soles by any company other than louboutin would totally and completely devalue the mark and the product carrying it.

clearly someone needs to educate DCJ Marrero that the shiny red soles need to be protected in the same way that coke and pepsi need their marks protected. if you notice, tiffany's filed an amicus on louboutin's side... can you imagine if every jeweler decided to use the baby blue box?

 

[Valerie]

This thread needs an illustration!

 

[syrenn]

I'm backing Louboutins! One must have one's trademark red soles! I'm right, aren't I, mo chara?

i think the southern district judge had no clue what thenature of the red soles is. the court seemed to ignore the registration of the mark, which generally carries great weight initially. they were also overbroad in defining what was being sought and seemed to think louboutin was trying to keep st laurent from using the color red. obviously, they need an education in shoes. if it were my case, i'd argue that the laquered red soles made louboutins instantly identifiable so had taken on a secondary meaning beyond the color. I would also point out that the use of laquered red soles by any company other than louboutin would totally and completely devalue the mark and the product carrying it.

clearly someone needs to educate DCJ Marrero that the shiny red soles need to be protected in the same way that coke and pepsi need their marks protected. if you notice, tiffany's filed an amicus on louboutin's side... can you imagine if every jeweler decided to use the baby blue box?

it is most definitely not baby blue... it is robins egg blue..... please no disrespecting the blue.

 

[Cuyo]

Chicks and shoes...


Just sayin'.

 

[syrenn]

Chicks and shoes...


Just sayin'.

Robins egg blue has nothing to do with shoes........

 

[Valerie]

I'm backing Louboutins! One must have one's trademark red soles! I'm right, aren't I, mo chara?

i think the southern district judge had no clue what thenature of the red soles is. the court seemed to ignore the registration of the mark, which generally carries great weight initially. they were also overbroad in defining what was being sought and seemed to think louboutin was trying to keep st laurent from using the color red. obviously, they need an education in shoes. if it were my case, i'd argue that the laquered red soles made louboutins instantly identifiable so had taken on a secondary meaning beyond the color. I would also point out that the use of laquered red soles by any company other than louboutin would totally and completely devalue the mark and the product carrying it.

clearly someone needs to educate DCJ Marrero that the shiny red soles need to be protected in the same way that coke and pepsi need their marks protected. if you notice, tiffany's filed an amicus on louboutin's side... can you imagine if every jeweler decided to use the baby blue box?

it is most definitely not baby blue... it is robins egg blue..... please no disrespecting the blue.

Yep, I just call it Tiffany blue... You think Robins might have a case?

 

[jillian]

This thread needs an illustration!

nice! these are the ones I have.

 

[Trajan]

Chicks and shoes...


Just sayin'.

oh hell yeah....thats Jillians longest post in 2 years.........shoes!!

 

[jillian]

I'm backing Louboutins! One must have one's trademark red soles! I'm right, aren't I, mo chara?

i think the southern district judge had no clue what thenature of the red soles is. the court seemed to ignore the registration of the mark, which generally carries great weight initially. they were also overbroad in defining what was being sought and seemed to think louboutin was trying to keep st laurent from using the color red. obviously, they need an education in shoes. if it were my case, i'd argue that the laquered red soles made louboutins instantly identifiable so had taken on a secondary meaning beyond the color. I would also point out that the use of laquered red soles by any company other than louboutin would totally and completely devalue the mark and the product carrying it.

clearly someone needs to educate DCJ Marrero that the shiny red soles need to be protected in the same way that coke and pepsi need their marks protected. if you notice, tiffany's filed an amicus on louboutin's side... can you imagine if every jeweler decided to use the baby blue box?

it is most definitely not baby blue... it is robins egg blue..... please no disrespecting the blue.

sorry.

 

[jillian]

Chicks and shoes...


Just sayin'.

oh hell yeah....thats Jillians longest post in 2 years.........shoes!!

i have plenty longer.

i just don't bother when there's no convo to be had. plus, IP was a big part of my practice. it happens to be an area that interests me.... unlike the pointless blathering of obama deranged lunatics.

 

[Valerie]

Chicks and shoes...


Just sayin'.

oh hell yeah....thats Jillians longest post in 2 years.........shoes!!

Blind much...?

 

[jillian]

Chicks and shoes...


Just sayin'.

oh hell yeah....thats Jillians longest post in 2 years.........shoes!!

Blind much...?

i know. one would think a real moderator would see an interseting conversaton happening and not troll it.

ah well...

 

[jillian]

Chicks and shoes...


Just sayin'.

Robins egg blue has nothing to do with shoes........

you know, it's interesting about the tiffany blue and the shiny red soles. it seems like the court would do well to distinguish the use made of those colors by these particular manufacturers and the use of those colors for other purposes.

for example, you can use shiny red to make a pocketbook or gloves or the tops of shoes... but not the bottoms -- which are specific to and identify louboutin's shoes. in fact, i know a lot of people who just call them "red bottoms".

and the tiffany blue it seems would be ok except in packaging for the types of goods sold by tiffany & co. since it is so identifiable with the company that it is "tiffany blue".

 

[Ropey]

one would think a real moderator would see an interseting conversaton happening and not troll it.

And an interesting one as well.

 

[jillian]

one would think a real moderator would see an interseting conversaton happening and not troll it.

And an interesting one as well.

that too.

 

[L.K.Eder]

I'm backing Louboutins! One must have one's trademark red soles! I'm right, aren't I, mo chara?

i think the southern district judge had no clue what thenature of the red soles is. the court seemed to ignore the registration of the mark, which generally carries great weight initially. they were also overbroad in defining what was being sought and seemed to think louboutin was trying to keep st laurent from using the color red. obviously, they need an education in shoes. if it were my case, i'd argue that the laquered red soles made louboutins instantly identifiable so had taken on a secondary meaning beyond the color. I would also point out that the use of laquered red soles by any company other than louboutin would totally and completely devalue the mark and the product carrying it.

clearly someone needs to educate DCJ Marrero that the shiny red soles need to be protected in the same way that coke and pepsi need their marks protected. if you notice, tiffany's filed an amicus on louboutin's side... can you imagine if every jeweler decided to use the baby blue box?

ysl countered the claims by seeking cancellation of the trade mark. therefore the judge could not and did not ignore the trade mark. the judge knows about the red soles, how they are perceived by the relevant customers, and he addressed it.

the trade mark is very broad, as it claims "red". not any specific version of red.

for a color to be trademarked it can not be functional.

good job prepping louboutin, who said in court that the color red had a lot of functions. d'oh.

he should have said "the color red is there to mark my merchandise and distinguish it from other producers' merchandise."

 

[jillian]

I'm backing Louboutins! One must have one's trademark red soles! I'm right, aren't I, mo chara?

i think the southern district judge had no clue what thenature of the red soles is. the court seemed to ignore the registration of the mark, which generally carries great weight initially. they were also overbroad in defining what was being sought and seemed to think louboutin was trying to keep st laurent from using the color red. obviously, they need an education in shoes. if it were my case, i'd argue that the laquered red soles made louboutins instantly identifiable so had taken on a secondary meaning beyond the color. I would also point out that the use of laquered red soles by any company other than louboutin would totally and completely devalue the mark and the product carrying it.

clearly someone needs to educate DCJ Marrero that the shiny red soles need to be protected in the same way that coke and pepsi need their marks protected. if you notice, tiffany's filed an amicus on louboutin's side... can you imagine if every jeweler decided to use the baby blue box?

ysl countered the claims by seeking cancellation of the trade mark. therefore the judge could not and did not ignore the trade mark. the judge knows about the red soles, how they are perceived by the relevant customers, and he addressed it.

the trade mark is very broad, as it claims "red". not any specific version of red.

for a color to be trademarked it can not be functional.

good job prepping louboutin, who said in court that the color red had a lot of functions. d'oh.

he should have said "the color red is there to mark my merchandise and distinguish it from other producers' merchandise."

i couldn't find the judge's decision online, but every commentary i read said he viewed it overbroadly and refused to give the registration its deference for purposes of an TRO.

i thought the judge failed to acknowledge the unique nature of the soles as identifying louboutin. that may well have been as a result of bad prep, but it seemed from the decision that the judge was not inclined to acknowledge a trademark with respect to any color.

but yes, he should have said that the color red is solely an identifying mark which separates louboutins from every other shoe marketed and that allowing anyone else to produce shoes with such an identifiable mark would devalue it to the point of worthlessness.

 

[L.K.Eder]

i think the southern district judge had no clue what thenature of the red soles is. the court seemed to ignore the registration of the mark, which generally carries great weight initially. they were also overbroad in defining what was being sought and seemed to think louboutin was trying to keep st laurent from using the color red. obviously, they need an education in shoes. if it were my case, i'd argue that the laquered red soles made louboutins instantly identifiable so had taken on a secondary meaning beyond the color. I would also point out that the use of laquered red soles by any company other than louboutin would totally and completely devalue the mark and the product carrying it.

clearly someone needs to educate DCJ Marrero that the shiny red soles need to be protected in the same way that coke and pepsi need their marks protected. if you notice, tiffany's filed an amicus on louboutin's side... can you imagine if every jeweler decided to use the baby blue box?

ysl countered the claims by seeking cancellation of the trade mark. therefore the judge could not and did not ignore the trade mark. the judge knows about the red soles, how they are perceived by the relevant customers, and he addressed it.

the trade mark is very broad, as it claims "red". not any specific version of red.

for a color to be trademarked it can not be functional.

good job prepping louboutin, who said in court that the color red had a lot of functions. d'oh.

he should have said "the color red is there to mark my merchandise and distinguish it from other producers' merchandise."

i couldn't find the judge's decision online, but every commentary i read said he viewed it overbroadly and refused to give the registration its deference for purposes of an TRO.

i thought the judge failed to acknowledge the unique nature of the soles as identifying louboutin. that may well have been as a result of bad prep, but it seemed from the decision that the judge was not inclined to acknowledge a trademark with respect to any color.

but yes, he should have said that the color red is solely an identifying mark which separates louboutins from every other shoe marketed and that allowing anyone else to produce shoes with such an identifiable mark would devalue it to the point of worthlessness.

from what i have read over the months, one crucial point is that the color is just defined as "red", and that therefore the trade mark is overly broad, monopolizing one of the fundamental colors.