It is textbook law that color can serve as a trademark so long as it acquires secondary meaning in the minds of consumers. Nonetheless, a federal judge issued a ruling two days ago that would seem to establish a bright-line rule that color can’t function as a trademark in the fashion industry.

The case involves designer Christian Louboutin’s red-soled high heels.  Louboutin claims that he originated the “Chinese red” trademark nearly 20 years ago through an experiment in which he painted the heels of shoes with nail polish.  Louboutin had successfully procured a registration with the U.S. Patent and Trademark Office in 2008.  After designer Yves Saint Laurent (YSL) began selling a shoe with a similar red heel, Louboutin filed suit, claiming infringement of the red-heeled trademark and seeking a preliminary injunction.

Despite Louboutin’s federal registration–and despite the well-recognized principle that colors are fair game for purposes of trademark–Judge Marrero denied the preliminary injunction, noting that Louboutin was unlikely to establish that the mark was entitled to protection because “in the fashion industry color serves ornamental and aesthetic functions vital to robust competition.”  Not only did Judge Marrero deny the injunction, he also ordered Louboutin to show cause why the federal registration should not be canceled outright.

Judge Marrero distinguished instances where color-based trademarks had been previously upheld in the fashion industry, noting that none of these cases involved a mark based entirely on color alone.  Likening fashion designers to artists as opposed to industrial designers, he posed the following hypothetical:

In his complaint, Picasso alleges that Monet, in depicting the color of water, used a distinctive indigo that Picasso claims was the same or too close to the exquisite shade that Picasso declares is ‘the color of melancholy,’ the hallmark of his Blue Period, and is the one Picasso applied in his images of water in paintings of that collection. . . . By virtue of his longstanding prior use of that unique tinge of blue in context, affirmed by its registration by the trademark office, Picasso asserts exclusive ownership of the specific tone to portray that color of water in canvas painting. Should a court grant Picasso relief?

Additionally, Judge Marrero indicated that granting relief would establish an unsettling anticompetitive precedent, allowing designers to battle fashion wars in the courtroom rather than in the marketplace.

While Judge Marrero’s concerns are all valid, his ruling seems to go against the grain of established trademark principles.  The Louboutin case highlights the difficulties of pigeonholing fashion design protection within the boundaries of trademark law.  Perhaps this is a sign that the U.S. should more seriously consider extending sui generis protection to fashion designs–that is, protection separate from the traditional intellectual property categories of copyright, trademark, and patent.  Creating a separate category of IP protection tailored to fashion designs would be a more appropriate course of action than developing a confusing, inconsistent legal precedent that applies to all trademark cases.

– Jordan Teague

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