2nd Circuit Says Yes to Louboutin's Red Sole Trademark
Right on time for New York’s Fashion Week, the United States Court of Appeals for the Second Circuit ruled today that “Louboutin’s trademark, consisting of a red, lacquered outsole on a high fashion woman’s shoe” has acquired secondary meaning as a distinctive source-identifier for Louboutin’s luxury brand. More than one year after a U.S. federal district court denied a preliminary injunction against Yves Saint Laurent (YSL) and issued a decision invalidating Louboutin’s red sole trademark, the Second Circuit has rendered Christian Louboutin’s iconic “Chinese red” soles to be a valid, protectable, and enforceable trademark.
Specifically, the Second Circuit reasoned that, “[w]e see no reason why a single-color mark in the specific context of the fashion industry could not acquire secondary meaning ― and therefore serve as a brand or source identifier ― if it is used so consistently and prominently by a particular designer that it becomes a symbol, 'the primary significance' of which is 'to identify the source of the product rather than the product itself'.” Therefore, the good news for Louboutin and his devoted fashionistas is that Louboutin’s infamous red soles will remain a source-identifying symbol of good will, luxury, and value in the fashion industry. Further, Louboutin has grounds to go after infringing rip-offs and knockoffs in the marketplace.
However, the Second Circuit raises one caveat to its ruling – third party uses of the red sole on monochrome red shoes are allowed. Therefore, Louboutin’s trademark rights do not extend to monochrome shoes. As a result, YSL and other shoe manufacturers are apparently still free to incorporate red bottoms so long as the entire shoe is the color red. To that end, is this decision a true victory for Louboutin or YSL?