Case- Law & Ethics

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  • Topic: Trademark, Trademark law, United States trademark law
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Case- Law & ethics

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CHRISTIAN LOUBOUTIN S.A., CHRISTIAN LOUBOUTIN, L.L.C., CHRISTIAN LOUBOUTIN, Plaintiffs-Counter-Defendants-Appellants, v. YVES SAINT LAURENT AMERICA HOLDING, INC., YVES SAINT LAURENT S.A.S., YVES SAINT LAURENT AMERICA, INC., Defendants-Counter-Claimants-Appellees, YVES SAINT LAURENT, (an unincorporated association), JOHN DOES, A TO Z, (Unidentified), JANE DOES, A TO Z, (Unidentified), XYZ COMPANIES, 1 TO 10, (Unidentified), Defendants-Appellees.

Docket No. 11-3303-cv

UNITED STATES COURT OF APPEALS FOR THE SECOND CIRCUIT

696 F.3d 206; 2012 U.S. App. LEXIS 18663; 103 U.S.P.Q.2D (BNA) 1937

January 24, 2012, Argued
September 5, 2012, Decided

SUBSEQUENT HISTORY: As Amended December 20, 2012.

PRIOR HISTORY: [**1]
Fashion designer Christian Louboutin brings this appeal from an August 10, 2011 order of the United States District Court for the Southern District of New York (Victor Marrero, Judge) denying a motion for a preliminary injunction against alleged trademark infringement by Yves Saint Laurent, a competing fashion house ("YSL"). The District Court found that Louboutin's trademark was likely not enforceable and declined to enter a preliminary injunction against YSL's use of the trademark. We conclude that the District Court's holding that a single color can never serve as a trademark in the fashion industry, Christian Louboutin S.A. v. Yves Saint Laurent Am., Inc., 778 F. Supp. 2d 445, 451, 457 (S.D.N.Y. 2011), is inconsistent with the Supreme Court's decision in Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 162, 115 S. Ct. 1300, 131 L. Ed. 2d 248 (1995), and that the District Court therefore erred by resting its denial of Louboutin's preliminary injunction motion on that ground. We further conclude that Louboutin's trademark, consisting of a red, lacquered outsole on a high fashion woman's shoe, has acquired limited "secondary meaning" as a distinctive symbol that identifies the Louboutin brand. As explained below, [**2] pursuant to Section 37 of the Lanham Act, 15 U.S.C. § 1119 we limit the trademark to uses in which the red outsole contrasts with the color of the remainder of the shoe. We conclude that the trademark, as thus modified, is entitled to trademark protection. Because Louboutin sought to enjoin YSL from using a red sole as part of a monochrome red shoe, we affirm in part the order of the District Court insofar as it declined to enjoin the use of red lacquered outsoles in all situations. However, we reverse in part the order of the District Court insofar as it purported to deny trademark protection to Louboutin's use of contrasting red lacquered outsoles. We enter judgment accordingly, and we remand for further proceedings with regard to YSL's counterclaims. Christian Louboutin S.A. v. Yves St. Laurent Am., Inc., 778 F. Supp. 2d 445, 2011 U.S. Dist. LEXIS 90200 (S.D.N.Y., 2011)

DISPOSITION: Affirmed in part, reversed in part, and remanded.

CASE SUMMARY:

PROCEDURAL POSTURE: Plaintiff fashion designer appealed the U.S. District Court for the Southern District of New York's denial of a motion for a preliminary injunction against defendant competitor for alleged infringement of the designer's trademark consisting of a red, lacquered outsole on a high fashion woman's shoe ("Red Sole" Mark -- a red sole on a shoe of a different color). The District Court found that the designer's trademark was likely not enforceable.

OVERVIEW: Color could be trademarked if it acted as a symbol distinguishing a firm's goods and identifying their source, without serving any other significant function. In the fashion industry, color could serve as a tool in the designer's palette, rather than as mere ornamentation. The Red Sole Mark had acquired secondary meaning -- and thus the requisite "distinctness" -- when used as a red outsole contrasting with the remainder of the shoe. It was used so consistently and prominently by the designer that...
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