Litigation Partner Heather McDonald commented on color trademarks in the August 19, 2011, issue of Women’s Wear Daily (“Louboutin, YSL Case Returns to Court”). McDonald focuses her practice in intellectual property enforcement and anti-counterfeiting litigation.
The article details Louboutin’s lawsuit against rival fashion house Yves Saint Laurent (YSL), which claims that YSL infringed upon Louboutin’s famous trademark, its red-soled shoes, with an all-red shoe created for a 2011 collection.
Though Louboutin’s trademark was obtained in 2008, New York Federal Judge Victor Marrero denied Louboutin a preliminary injunction barring the sale of the all-red pump created by YSL.
Trade dress, an area of the law that deals with the design or appearance of a product, could protect Louboutin’s red sole because it is a mark directly associated with the fashion house and vital to its identity, but Judge Merrero disagrees, explaining that the color red only performs a “creative function” and no one designer should have a “monopoly” on it.
McDonald says color trademarks are tricky. Louboutin was able to obtain the red-sole mark because “he was the first to attempt such a thing,” she said. “It would be harder if he tried to obtain that mark today.”