Trademarks – Is There a Monopoly on Color in the Fashion Industry?

Walking around New York City, it’s not too difficult to recognize designer heels due to their unique designs. In particular, Christian Louboutin’s red soles have become a brand on its own. Christian Louboutin designs and markets high-fashioned footwear, leather goods, and accessories. Since 1992, the outsoles of the Louboutin shoes have been painted in lacquered red, giving them the vibrant look that so many women have fallen in love with and have come to identify the brand by. The lacquered red outsole contrasts sharply with the color of the rest of the shoe. These simple black heels with the red outsoles became Louboutin’s signature footwear in the market. Those red lacquered outsoles were registered as a trademark in 2008.
Three years later in 2011, Christian Louboutin brought a law suit against Yves Saint Laurent (“YSL”) alleging a trademark infringement by its competitor in the fashion industry. The pair of YSL shoes in question was red, and every other part of the shoe including the outsoles were also red. The District Court for the Southern District of New York found that a single color cannot be protected by a trademark in the fashion industry, and declined to enter a preliminary injunction against YSL’s use of the unenforceable trademark. The second circuit affirmed in part, but also reversed in part by stating, “Louboutin’s trademark, consisting of red, lacquered outsole on a high fashion woman’s shoe, has acquired limited “secondary meaning” as a distinctive symbol that identifies the Louboutin brand.” Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc., 696 F.3d 206 (2d Cir. 2012).
The court reasoned that the lacquered red outsole is a single color and on its own would not be distinctive. However, since customers have come to identify and distinguish the product by its color, the red lacquered outsole has a “secondary meaning.” Therefore, protection was given to hoes where the red contrasts against the rest of the shoe, since that has the opportunity to provide secondary meaning. On the other hand, no protection was allowed for shoes that are entirely red because customers are less likely to identify them, and because it would otherwise allow a brand to monopolize all red shoes. The Court limited the trademark to uses where the red outsole contrasts with the color of the remainder of the shoe pursuant to Section 37 of the Lanham Act, 15 U.S.C. §1119. The Louboutin decision seems consistent with the Supreme Court’s holding in Qualitex Co. v. Jaconbon Prods. Co. that a color can meet the statutory requirements of a protected mark. The Supreme Court reasoned that a color can identify and distinguish the goods of a manufacturer from those of his rivals by acquiring secondary meaning over time.
Many brands in the fashion industry market their products with a specific color. For instance,Tiffany & Co. is identifiable by its distinctive blue and Hermes uses orange. Such brands are understandably worried about protecting their trademarked colors. Tiffany in particular  registered its blue packaging trademark and filed an amicus brief in the Second Circuit regarding the Louboutin-YSL dispute, taking an action to protect its interests. As with Louboutin’s red outsoles, consumers have come to immediately associate the high-end jeweler’s pantone blue shade with the brand itself.
What would happen if more and more brands acquire this secondary meaning of their trademarked colors? There are only a certain number of colors and shades that we can identify with brands. Will there be a monopoly of colors in the near future? Some might worry that allowing this kind of protection in the fashion industry may lead to less creativity and competition. However, as the cases with Louboutin, Tiffany, and Hermes demonstrate, not all brands can simply acquire secondary meaning. It took decades for consumers to associate these colors with their respective products, and accordingly the previously mentioned concerns may be premature. Additionally, one must not forget the goals of trademark law. As the Supreme Court stated in Qualitex, “Trademark law, by preventing others from copying a source-identifying mark, reduces the customer’s costs of shopping and making purchasing decisions, for it quickly and easily assures a potential customer that this item – the item with this mark – is made by the same produced as other similarly marked items that he or she liked (or disliked) in the past. At the same time, the law helps assure a produced that it will reap the financial, reputation-related rewards associated with a desirable product.”
Soung Young Choe is a J.D. candidate, 2018, at NYU School of Law.