High fashion designer Christian Louboutin was not entitled to a preliminary injunction preventing competing fashion designer Yves Saint Laurent (YSL) from marketing shoes that used the same or a confusingly similar shade of red as that protected by Louboutin's registered "Red Sole Mark," according to the federal district court in New York City. Louboutin claimed "the color red" as a feature of the mark, and registered a "lacquered red sole" for "women's high fashion designer footwear."

Color Mark in Fashion

Despite the presumption of validity accorded registered marks, Louboutin was unlikely to be able to prove that its red outsole was entitled to trademark protection, even if it had gained enough public recognition in the market to have acquired secondary meaning, the court held. Color alone "sometimes" may be protectable as a trademark, where that color has attained secondary meaning. However, in fashion markets, color serves not solely to identify sponsorship or source, but is used in designs primarily to advance expressive, ornamental, and aesthetic purposes, the court explained. According to the court, Louboutin's use of red outsoles served nontrademark, nonsource-identifying functions --i.e., to attract, to reference, to stand out, to blend in, to beautify, to endow with sex appeal.

Competitive Concerns

Louboutin's Red Sole Mark posed serious legal concerns, as well as threats to legitimate competition in the designer shoe market. Louboutin's claim to "the color red" without limitation was overly broad and inconsistent with the scheme of trademark registration established by the Lanham Act, in the court's view. Awarding one participant in the designer shoe market a monopoly on the color red would impermissibly hinder competition among other participants. "The law should not countenance restraints that stifle creativity and competition by granting one designer the right to exclude competitors from using an ornamental or functional medium necessary for free and productive artistic expression," the court opined.

The court denied Louboutin's motion for a preliminary injunction and ordered it to show cause why the action should not be converted into a motion for partial summary judgment cancelling registration of Louboutin's Red Sole Mark.

Christian Louboutin, SA, SD N.Y., ¶61,903.