Non-traditional Trademark: Louboutin Red Sole Shoes
by Dyan M. House
Apple®. Nike®. Starbucks®. All are well-known trademarks. We recognize the word marks and know the icons that represent these brands—the apple, swoosh and mermaid, respectively. But a trademark can be something other than a name or a logo. A color, sound, shape or smell can function as a trademark as long as it identifies the source of goods or services and is not purely functional.
Business owners often have the mistaken view that only a logo design can function as a trademark. For this reason, it is important to take a global inventory of the products and services of the business and how they are marketed. When this is done it will become apparent that product names, service identifiers and slogans may function as marks. Some of the most valuable trademarks fall into the category of “non-traditional” marks such as color, product shape, sound or smell. The Lanham Act provides for registration of “any word, name, symbol, or device, or any combination thereof” used “to identify and distinguish” the goods or services of one party from another.
The NBC chime, the Harlem Globetrotters’ theme music, and the Pillsbury Doughboy giggle are all examples of sound marks. Examples of product shape marks include the Coca-Cola bottle and the iPod. Robin’s egg blue for jewelry (Tiffany & Co.), pink insulation (Owens-Corning), canary yellow notes (3M’s Post-It Notes) and brown delivery vehicles (United Parcel Service) are among the most well-known examples of color marks.
For non-traditional marks such as color, the mark must come to identify particular goods or services of the mark’s owner before it can rise to the level of a protectable trademark. It is well established that color cannot be protectable as a trademark if it performs a utilitarian function it. If a color is essential to the use or purpose of a product, or if it affects the cost or quality of a product, it may not rise to the level of a trademark. Color may be protectable where the color has attained “secondary meaning” identifying and distinguishing a particular brand. Robin’s egg blue by itself does not indicate the source of luxury jewelry. It is through Tiffany’s substantially exclusive and continuous use, and extensive advertising, that robin’s egg blue has come to be known as “Tiffany blue.”
A recent case found two giants of fashion arguing over whether color is a protectable trademark as applied to shoes. This case involved famed shoe designer Christian Louboutin, whose shoes bear the recognizable lacquered red sole, suing Yves Saint Laurent for trademark infringement for YSL’s use of a red outsole in its 2011 cruise collection. Louboutin obtained a federal registration for a lacquered red sole on footwear in connection with “women’s high fashion designer footwear.” But despite the fame of the red sole, substantially exclusive use, secondary meaning and a federal registration, the district court held that the lacquered red sole is not entitled to trademark protection under the Lanham Act. Christian Louboutin S.A. et al v. Yves Saint Laurent America, Inc. et al, 778 F.Supp.2d 445 (S.D.N.Y. 2011). Appeals have been filed in this matter, and there has been much discussion as to whether Louboutin’s trademark red sole is really a trademark at all.
Whether or not Louboutin is ultimately successful in arguing in favor of his red sole mark, brand owners are well advised to consider what non-traditional trademarks they use and take action to protect those marks. How? In the same way as with an inherently distinctive logo—--through consistent and continuous use. The mark, whether it is a color, shape, sound or smell, should serve the purpose of identifying the source of the goods or services. Once a non-traditional trademark is identified as a key mark, the company should consider taking the steps to register it with the United States Patent and Trademark Office.
Dyan M. House is a partner at Carter Stafford Arnett Hamada & Mockler, PLLC. She can be reached at dhouse@carterstafford.com.
