Fashion Designer Louboutin Sues YSL over Trademarked Signature and Loses

Apple can sue Samsung (and has won a big victory in the EU) over similarities between Samsung Galaxy tablet and the iPad, Best Buy can go on suit-spree against any entity that uses the word Geek, but a fashion designer cannot win over a signature use of color. Christian Louboutin makes high luxury shoes all with red soles. The red-sole signature is internationally known in the fashion industry and widely accepted as some in the industry refer to the shoes as “red bottoms”. In 2008, the U.S. Patent and Trademark Office (USPTO) trademarked the red soles. Given this status Louboutin sued Yves Saint Laurent (YSL), another fashion design company, as they started to premiere shoes with red soles. Unfortunately,  “Color Wars: Luxury Makers Battle Over Red-Soled Shoe” by Ray A. Smith and Ashby Jones reports a Judge has shut down Louboutin’s request to stop YSL’s red-soled shoes.

Judge Marrero is quoted as stating:

“Because in the fashion industry color serves ornamental and aesthetic functions vital to robust competition, the court finds that Louboutin is unlikely to be able to prove that its red outsole brand is entitled to trademark protection”

The lawyer for YSL responded with “No designer should ever be allowed to monopolize a color”

Is this a monopoly of a color, a company protecting a well-known trademarked signature, or both? The article gives examples of fashion companies (e.g., Louis Vuitton, Levi-Strauss, Burberry) with trademark protection on their designs. We all are aware that the blue from Tiffany & Co. is trademarked as “Tiffany Blue”. So colors and signatures have been trademarked and protected.

The Judge believes allowing Louboutin to halt other red-soled shoes is trying to own a color and not a signature; doing so will lead to a dangerous place of designers, artists, or any other person who uses a color trying to own a color. Judge Marrero emphatically believes Louboutin should not have been granted the trademark on the red soles. He wants the company in court “next week to argue why he shouldn’t just cancel Louboutin’s trademark outright”.

Now, Louboutin finds itself in a sad chain of events. First they apply and are legally granted a trademark. Based on this trademark, they sue, which is what any one who believes their trademark infringed does. Now, they not only lost but also could have their trademark revoked. Regardless of Marrero’s belief, Louboutin did nothing wrong and his issue should with the USPTO.  It could set dangerous precedence if red soles can stay trademarked but the USPTO granted that trademark and they should have been concerned with the consequences of doing so.

Judge Marrero should also be concerned that his decisions could set another precedence:  not giving protection to a legally trademarked entity could mean that although a business has trademarked an item they actually have no real trademark protection.