Lending Some Well-heeled Support

[author: Norcross, Linda M.]

Famed high-fashion footwear designer Christian Louboutin is seeing red. Louboutin, famous for a lipstick red sole featured on its high-end heels, is embroiled in an ongoing legal battle with rival design house Yves St. Laurent (“YSL”), over the right to sell footwear bearing Louboutin’s signature red sole.

According to the corresponding federal trademark registration, Louboutin has been using its red sole brand since 1992. In the Fall of 2011, YSL’s resort collection featured four pairs of shoes with red soles. Louboutin responded by filing a request in U.S. District Court for the District of New York for preliminary injunction to prevent YSL, as well as potentially other high profile designers and lesser known brands, from producing and selling shoes bearing its distinct red sole. In August of 2011, Louboutin’s request was denied, so Louboutin appealed the decision to the U.S. Court of Appeals for the 2nd Circuit.

Louboutin recently received some key support in the form of an amicus brief, filed by the International Trademark Association (“INTA”) on November 14, 2011*. An amicus brief is filed by a professional person or entity that is not a party to the case, but offers the information contained in the brief in an effort to advise the court in rendering its decision. INTA’S brief addresses what it believes are two errors commited by the District Court, particularly with respect to its analysis of the validity of Louboutin’s trademark. This piece focuses on the first error, namely, that the court erred in rejecting the presumption of validity granted to Louboutin via the federal trademark registration.

In its analysis, the court determined that Louboutin’s claim was really about the use of red in general, which in its opinion would unfairly impede competitors’ ability to use the color not only in connection with high-end footwear, but potentially apparel and other fashion accessories as well.

Louboutin owns U.S. Registration No. 3,361,597 for the mark in question, which is expressly described as consisting of “a lacquered red sole on footwear.” INTA contends that the Court mischaracterizes the extent of Louboutin’s claim, interpreting that it is intended to cover the color red, when in fact the registration very clearly specifies that the mark covers a lacquered red sole.

Here’s what the law says: Under Section 7(b) of the Lanham Act (the federal Trademark Act), 15 U.S.C. 1057(b), a certificate of federal registration is considered prima facie evidence (on its face/presumptive) of the validity of the registered mark and of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate, subject to any conditions or limitations stated in the certificate.

INTA asserts that such limitations are clearly stated, in this instance, and that the court “failed to analyze the mark as registered,” instead mistakenly characterizing the mark as broadly covering red shoes. INTA’s brief notes that the trademark registration process is not simply a clerical process wherein an applicant files the proper paperwork and poof - the registration is granted. On the contrary, the process involves substantive examination wherein a United States Patent & Trademark Office (“USPTO”) Examining Attorney carefully considers the mark in the application to insure that it is in accordance with the USPTO’s specific examination procedures and specific parameters of trademark law, which include close review of the description of the mark, as well as an opportunity for any interested third party to oppose the mark’s registration. A federal registration certificate specifically defines the limitations of a mark as well as the goods and/or services offered. Here, the registration in question includes a line drawing of the mark which shows the color and position of the mark on the sole of the shoe, as well as a verbal description, i.e. “the color red is claimed as a feature of the mark,” and “the mark consists of a lacquered red sole on footwear.” (emphasis added) The wording expressly set forth the limitations of the rights granted through the registration process.

INTA contends that the District Court merely glanced at the recitation in Louboutin’s mark description, and thus “fundamentally misread the registration.” This is supported by the court’s analysis focusing on the presumption that Louboutin’s claim extends to the color red. On the contrary, Louboutin makes no sweeping claim to the right to use red. In fact, Louboutin did exactly what is required of a federal trademark registrant, in claiming that the color red is simply a feature of its mark, and further providing the specific limitations in the mark description, i.e. that it extends only to the sole of the footwear.

INTA’s brief emphasizes that the District Court disregarded the presumption of validity conferred by a federal registration, which actually places the burden of rebutting that presumption on the defendant (YSL). The court’s analysis should have involved the careful consideration and weighing of evidence presented by each party as to the question of the registration’s validity, whereby the burden would have been on YSL to show, by a preponderance, that it could discredit the validity of Louboutin’s registration. Instead, the District Court became engrossed in its own “fanciful hypothetical,” as INTA puts it, comparing Louboutin’s use of the color red to Picasso’s use of the color blue during his “blue period,” and theorizing about a lawsuit brought by Picasso to prevent Monet from using the same shade. However, Picasso wasn’t using blue as a trademark, he was simply using the color to paint. The issue here is not really about claiming the exclusive right to use a particular color in general, but rather, using a particular color in a limited manner as a distinctive identifier of the source of a product or service, i.e. as a trademark, which in this instance has been vetted and approved by the experts.

Rather than deferring to the USPTO’s determination that Louboutin’s mark is distinctive and valid, the court focuses on the fashion industry’s reliance on the use of color, imagining that a ruling in Louboutin’s favor would effectively inhibit other designers from using red, while leaving Louboutin with the ability to “paint with a full palette.” INTA charges that the court would never have reached this overbroad conclusion had it properly evaluated the mark as it is set forth in the registration in the first place.

As INTA’s brief surmises, if the District Court’s decision is upheld, preventing consumer confusion, trademark infringement and counterfeiting will be made even more difficult, leaving a host of trademark owners and consumers alike left feeling blue.

As a trademark lawyer who hails from Las Vegas, my guess is that the odds may tip in Loubotin’s favor before this is all over.

* Brief of Amicus Curiae International Trademark Association in Support of Vacatur and Remand, Christian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc., 778 F.Supp.2d 445 (S.D.N.Y. 2011) (No. 11-3303).