Color trademarks are those which use a color alone as the brand for a product, what trademark experts call a “source indicator.” Color marks are considered non-traditional trademarks, and they are generally disfavored by the U.S. Patent and Trademark Office. Nonetheless, some color marks have achieved “distinctiveness,” that is, the degree of public recognition as a source indicator compels the USPTO to allow owners to register the color as a mark in their field of commerce.
For example, United Parcel Service holds a registration [Reg. No. 2901090] for “the color chocolate brown” [Pantone 462C] as applied to the entire surface of vehicles and uniforms” for the service of delivering personal property. Yellow is registered by the USPTO [Reg. No. 78706568] to the Lance Armstrong Foundation as a single color for wristbands for use in charitable fundraising.
This summer we discussed in this blog the holding by the Federal Court in the Southern District of New York holding that Louboutin’s color mark, its red outer sole, was not a protectable trademark because it was “functional.”
That is, the Southern District found that the red sole had significant non-trademark functions (other than as a source indicator) including “to attract, to blend in, to beautify, to endow sex appeal,” all features of “aesthetic functionality.” According to the Court, Louboutin should not be able to use trademark law to deprive other designers from using an aesthetically functional feature.
Louboutin had sought to enjoin Yves Saint Laurent from using a red sole as part of a monochrome red shoe in YSL’s monochrome shoe line. Further, the District Court looked at the issue of a single color mark in the fashion industry and was concerned about “whether there is [not] something unique about the fashion world that militates against extending trademark protection to a single color.” – Christian Louboutin S.A. v. Yves St. Laurent America Holding, Inc., 778 F. Supp. 2d 445, 451 (S.D.N.Y. 2011)
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| Left: YSL’s monochrome red shoe; Right: Louboutin’s red contrasting outsole |
By modifying Louboutin’s trademark to be not a single colored red outer sole, but rather a “red outsole that contrasts with the color of the remainder of the shoe,” the Court of Appeals recognized the distinctive Louboutin identifier.
After all, the Appeals Court noted, it is the contrast of the sole and the upper that causes the “pop” that distinguishes its creator. The Appeals Court also affirmed the lower court’s decision that Louboutin could not enjoin YSL from using a red outsole as part of a red monochrome shoe.
For those interested in the detailed analysis the Court of Appeals gave to the concepts of functionality and aesthetic functionality in the fashion branding context, click here for the full Second Circuit Opinion.
Lizbeth Hasse
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