Fashion Law

Latest Louboutin v. YSL lowdown

Is it fair to uphold Louboutin’s color trademark monopoly?

I think upholding a color trademark for Louboutin’s red outsole would be unfair competition. To be fair, Louboutin’s color trademark should be limited or canceled.

Aside from the fact that Louboutin’s color trademark was a design used by designers before Louboutin’s trademark was granted, his color trademark is too far-reaching.

Would you be confused by non-Louboutin red bottoms?

Louboutin believes his registered red trademark does not adversely affect competition. I think such a trademark could stifle fashion. This is particularly true if other designers start color claiming.

Fashion law catch up:

Recap of case movement:
  • The International Trademark Association (INTA) filed an amicus brief addressing only Court’s “errors” with respect to its analysis of the trademark’s validity
  • YSL filed an appellate brief, arguing that Tiffany and INTA mischaracterize the District Court’s opinion as a “per se ban” on single color trademarks in the fashion industry.  YSL states that the District Court made only a preliminary finding that Louboutin is “unlikely to be able to prove” that its mark is entitled to protection.
    • Tiffany & Co. has a strong color trademark interest (duh). Tiffany & Co.’s lawyers were the ones who helped Louboutin file for its red outsole trademark.
  • Law professors filed an amicus brief in support of YSL

I think YSL is downplaying the strength of its case. —This may be a defensive move on YSL’s part hoping to prevent Tiffany & Co.’s lawyers from working with Louboutin’s lawyers.

Fashion law case update:
10 January 2012:  Louboutin filed a brief arguing:

  • The Court erred by misconstruing the red outsole mark, ignoring the statutory presumption of validity, and ignoring the burden of proof
  • The Court erred by misapplying the tests for functionality and aesthetic functionality
  • Louboutin demonstrated that it is entitled to a preliminary injunction because it had shown that:
    • its red outsole mark acquired secondary meaning
    • its red outsole mark is strong
    • its red outsole mark is neither functional under the traditional test nor aesthetically functional
    • there is a likelihood of confusion
    • the red outsole mark is famous
    • YSL is not likely to succeed on its fair use defense
If you are near the US Court of Appeals for the Second Circuit, in NY, you should go check out the shoe saga in person and report back here 😉
On that note… it is quite gangster bold of YSL to release another shoe with red outsoles while Louboutin is on their back. See it below (left).

The two shoes on the right are the reason Louboutin brought its current fashion law case against YSL.

Although I do not think that Louboutin’s color trademark should be held valid, I think he is doing the right thing by fighting and protecting his brand.
Policing your trademark helps prevent genericide.* If you do not actively protect against unauthorized use, your inaction can and will be used against you.
I hope this case gets done quickly so Louboutin can refocus its fight on brand protection. Below is an image of a bulldozer destroying seized counterfeit Louboutin shoes. Destruction of counterfeit goods is not unique. Trademark owners commonly request delivery of infringing goods (for destruction) from a counterfeiter. But a photo of such destruction is quite unique.
Louboutin's destruction of counterfeit goods - Photo from color trademark fashion law post

Fashion law photo source: via Fashion Blawger on Pinterest

♥ Thanks for reading and supporting my blog! 

*Genericide is when a mark (logo, slogan, sign, geographic indicator, etc.) becomes generic. Unauthorized use of a trademark or the public’s expropriating a term equals trademark suicide.

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