Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., et al. Case No. 11-CIV-2381-VM (April 7, 2011, S.D.N.Y.)

Christian Louboutin (“Louboutin”), famed French fashion designer, sued Yves Saint Laurent (“YSL”) for infringing on his ever-so-popular trademark – women’s high fashion footwear with the infamous red-lacquered bottoms. Louboutin seeks $1 million in damages for alleged trademark infringement and counterfeiting.

Since 1992, Louboutin has been selling his fancy footwear with the alluring red bottoms, which cost anywhere from $450 to $3,500 a pair. Louboutin claims that YSL has been selling women’s shoes with red outsoles, costing about $600 to $800 a pair, since January 2011 that are nearly identical to his women’s shoes in the same upscale department stores, which include, but are not limited to, Saks Fifth Avenue, Barneys, and Bergdorf Goodman.
 
Under U.S. trademark law, color can be protected and registered if it is not functional, ornamental or decorative and has acquired distinctiveness for the relevant goods and services (color cannot be inherently distinctive). For example, a color would be considered functional if it is essential to the use or purpose of the article or affects the cost or quality of the article (i.e., the color black for outboard boat motors or the color yellow or orange for safety signs). Furthermore, a color would be considered ornamental or decorative if competitors use the same or similar color for their products (i.e., floral pattern design of morning glories and leaves for tableware are merely decorative). Therefore, color can only acquire distinctiveness upon a showing of exclusive and continuous trademark use in commerce for more than five years and concrete evidence that the color is perceived as a mark for the relevant goods or services by consumers.
  
In this case, the United States Patent and Trademark Office found that Louboutin’s red-lacquered soles acquired the requisite distinctiveness for trademark protection, granting it U.S. Registration No. 3361567 for “lacquered red sole[s]”  covering “women’s high fashion designer footwear” in International Class 25. Therefore, given Louboutin’s long-standing trademark use for nearly twenty years and the widespread consumer recognition of red bottom soles as Louboutin’s signature coupled with this U.S. trademark registration, it appears that Louboutin has a pretty strong case for trademark infringement against YSL if, indeed, YSL’s red-outsole women’s shoes are “confusingly similar” to Louboutin’s trademarked footwear.