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:
- Related posts:
- Fashion law takeaway:
- An approved trademark application does not guarantee a valid trademark.
- 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
The two shoes on the right are the reason Louboutin brought its current fashion law case against YSL.