Can you trademark a color? Louboutin's red sole and the 2012 ruling that limited it

Can you trademark a color? Yes. In Qualitex Co. v. Jacobson Products Co. (1995) the U.S. Supreme Court held that color can serve as a trademark, and in 2012 the Second Circuit applied that rule to fashion in the Christian Louboutin red sole case. The same ruling then cut the mark back: it protects a red lacquered outsole only where it contrasts with the rest of the shoe.

The rule: color alone can identify a brand

A trademark, under the federal definition in 15 U.S.C. 1127, includes "any word, name, symbol, or device, or any combination thereof" used to identify one seller's goods and distinguish them from others. Color is not on that list by name, so for years courts disagreed about it. The Supreme Court's Qualitex decision settled the question for a green-gold color on press pads, concluding that "the Ninth Circuit erred in barring Qualitex's use of color as a trademark."

A color has to do the job of a brand name before it counts. In trademark terms, it needs "secondary meaning": shoppers have to see it and think of one maker. That is a fact question, decided on evidence.

What Louboutin claimed

According to the Second Circuit's opinion, Christian Louboutin has "since 1992 painted the 'outsoles' of his women's high-heeled shoes with a high-gloss red lacquer," and in 2008 registered the red lacquered outsole with the Patent and Trademark Office. The registration reads that "the color(s) red is/are claimed as a feature of the mark" and that the mark "consists of a lacquered red sole on footwear."

In 2011 Louboutin sued Yves Saint Laurent over a line of monochrome shoes that included an all-red shoe with a red sole. The district court denied a preliminary injunction and went further, reasoning that a single color can never be a trademark in the fashion industry. Louboutin appealed.

What the Second Circuit decided

The panel of Judges Cabranes, Straub and Livingston ruled on September 5, 2012, after argument on January 24, 2012. Its holdings, in order:

• The district court's categorical rule "is inconsistent with the Supreme Court's decision in Qualitex," so it was an error.
• Louboutin's mark had acquired secondary meaning for a red outsole that contrasts with the upper, and is "entitled to trademark protection" in that form.
• The record did not show secondary meaning for a red sole on a red shoe, so the court used its power under Section 37 of the Lanham Act, 15 U.S.C. 1119, to limit the registration.
• Because YSL's monochrome shoe was not a use of the limited mark, the court did not need to decide whether it risked confusion or whether the color was functional.

The court instructed the Director of the Patent and Trademark Office to limit the registration "to only those situations in which the red lacquered outsole contrasts in color with the adjoining 'upper' of the shoe." The judgment concerns U.S. Trademark Registration No. 3,361,597.

What the lower court found

Before the appeal, the district court (Judge Victor Marrero, S.D.N.Y.) had found that Louboutin "invested substantial amounts of capital building a reputation and good will," a point YSL did not dispute. It found the red outsole had become "closely associated with Louboutin," and described the "flash of a red sole" as instantly recognizable "to those in the know." The Second Circuit accepted those findings. What it rejected was the legal rule that fashion is a special field where color can never be a mark. It sent YSL's counterclaims back to the district court, and either party could return to the same panel afterwards.

The evidence that drew the line

The court did not invent the contrast rule from nowhere. It cited the record. Pinault, the chief executive of YSL's parent company, had written that the mark's "distinctive signature" lay in its contrast with the shoe's upper. Of the hundreds of Louboutin photographs submitted, only four showed monochrome red shoes. And Louboutin's own consumer surveys showed that people who misidentified the YSL monochrome shoe as Louboutin's nearly all pointed to the red sole, rather than the general red color.

That last point is easy to miss. The color itself was not what shoppers recognized. The combination was.

Why this matters beyond one shoe

The practical effect was to keep a famous color mark alive while preventing it from swallowing the color red. Competitors may sell red shoes. They may even sell shoes with a red sole when the upper is also red. What they may not do, on this ruling, is use a contrasting red lacquered sole on a high fashion shoe as a signal of the same kind.

What the ruling does not say

It does not say fashion houses can claim a color across a garment category. The protection is for one specific, proven combination. It also does not decide whether a competitor using red on a sole with a red upper could ever be infringing for another reason, because the court did not reach confusion or functionality on those facts.

Brand signals like this are a big part of what luxury accessories cost; our piece on why Birkin bags are so expensive covers another.

Our take

The case is a good example of the law doing something sensible. A color can be a brand, but only the version the public has learned. For designers, the lesson is documentation: sales, advertising, and recognition evidence is what turns a decoration into a mark. For shoppers, a red sole on a red shoe tells you nothing about who made it.