BY: BECKY STOCKEL

For nearly two decades, fashionistas everywhere have known that that a red outsole on a pair of stilettos means one thing: high-fashion designer Christian Louboutin is behind them.  In recent years, thanks to celebrities like Jennifer Lopez[1] and Sarah Jessica Parker,[2] even those who don’t follow fashion know it.

Last year, Yves St. Laurent (YSL) challenged Louboutin by releasing four new shoes with their Spring 2011 line that were red all over –including the outsoles.  In response, Louboutin brought suit against YSL for violations of the Lanham act, including trademark infringement and counterfeiting,  false designation of origin and unfair competition, and dilution of trademark.[3] YSL counterclaimed to have Louboutin’s trademark canceled, claiming the color was not distinctive, ornamental, and functional.[4]

The US PTO granted Louboutin a trademark on their famous red soles,[5] which clearly have secondary meaning in the fashion world, just like the little robin’s egg blue box from Tiffany’s or Burberry plaid.  Color has been allowed as a trademark since the Supreme Court decided Qualitex Co. v. Jacobson Products Co.[6] In that case, Qualitex’s particular shade of green-gold used on their dry cleaning pads represented the high quality and reputation of Qualitex and serve merely as a brand identifier.[7]

Under Qualitex, in order for color to be considered a trademark, it must first have developed secondary meaning.[8] Once secondary meaning is established, the color must also not be considered “functional.”[9]

In this case, Judge Victor Marrero in the NY district court ruled that shoes must have soles and that the soles were therefore functional.  By this reasoning, the red color of the soles were not trademarkable.  The court also referred to Louboutin’s reasoning behind choosing the color red for his soles.  He wanted to give his shoes “energy,” and felt that the red soles were “engaging, flirtatious, memorable” and “sexy.”[10]

Women who purchase the shoes agree to some extent that the color red has this effect.  Even Judge Marrero notes that “heads turn and eyes drop.. lacquered red outsoles on high-heeled, black shoes flaunt a glamorous statement that pops out at once.”[11]

It is true that a shoe must have soles and that soles are functional – they serve to keep our feet off the pavement and are the very essence of the shoe, whether we’re talking about flip-flops, winter boots, or six-inch stilettos.  But the Qualitex rule concerning functionality concerns the trademark itself, in this case, the color red itself, when used in conjunction with the outsoles of shoes.  The Qualitex court stated that the reason for the functionality doctrine is to “prevent[] trademark law, which seeks to promote competition by protecting a firm’s reputation, from instead inhibiting legitimate competition by allowing a producer to control a useful product feature.”[12]

Here, the color red serves no “useful product feature.”  If the outsoles were purple, or green, or striped orange and pink, they would serve the same utilitarian purpose.  By trademarking red outsoles, Louboutin in no way prevents his competitors from competing with him, because the inclusion of a functional outsole is still possible.  Rather, the color red – and all the “energy” and other psychological responses to the mark – merely serve the purpose of brand identifier, which is the foundation of trademark law in the first place.

If the designer’s testimony concerning his choice to use red gives the Red Sole Mark a function, then it is a slippery slope before other marks are declared invalid.  The Nike “swoosh,” for example, is meant to mimic the wings of the company’s namesake, the Greek goddess of victory.  When people wear Nike running shoes, they should have a sense that their feet are flying down their path.  Because, like Louboutin, Nike’s mark was intended to inspire some sort of emotional or psychological response, should it also be invalidated?

Louboutin has promised to continue their fight to protect the Red Sole Mark and filed an appeal in the Second Circuit on October 17, 2011.[13]

The final decision regarding the protection of their trademark could have serious  ramifications on the use of a color as a trademark and how the courts define the functionality doctrine.  On October 24, 2011, Tiffany and Company filed an amicus brief in support of Louboutin.[14] Tiffany’s brief attacks Judge Marrero’s decision on the grounds that it makes “sweeping per se rules concerning the protectibility and functionality of single colors in the fashion industry”[15] which would affect whether Tiffany’s own trademark “Tiffany Blue” used on their retail boxes and shopping bags.

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[1] Jennifer Lopez, Louboutins (Epic Records, 2009) (reached No. 1 on the Billboard Hot Dance Songs Chart).