There were two primary arguments against single color marks – the first was ‘color depletion theory’ and the other was ‘shade confusion theory: The gist of the color depletion theory was that there were only so many colors so taking even one out of circulation disadvantaged competitors. The shade confusion theory went to the difficulty in analysis if there were single color marks and can be summed up by the zen koan “What is confusingly similar to taupe?”
Then came Qualitex v Jacobson which upheld the registrability of green–gold dry-cleaning pads which looked like this:
and held that a color is registrable if the color has acquired secondary meaning for the relevant goods and does not function as a necessary element of the product, or does not otherwise improve the products appeal to consumers. Discussion of Qualitex and link to text of decision here.
So, that brings us to the Louboutin v YSL case. Louboutin sells shoes with red lacquered soles that look like this:
If I asked my wife “who puts out shoes with red soles, she would say “Louboutin” (and, having studied French, she would pronounce it correctly). Jennifer Lopez sings about Louboutins and Beyonce wears them and they sell 500,000 units a year and so on and I would guess that using the conventional ways we measure these things, that red lacquered soles have acquired secondary meaning designating Louboutin as the source.
Now, YSL sells shoes and it sells red things and it sells red shoes such as the “TribToo” high heel pump in red patent leather:
And one thing that YSL likes to do is sell ‘monochrome shoes’, that match the color of the sole to the upper to achieve ‘a solid block of color’ so that ‘no part of the shoe stands out.” So YSL sold shoes with red soles.
The parties discuss but get nowhere and Louboutin sues for trademark infringement and dilution. The prelim papers are here. You may want to glance at the papers first. Both sides are represented by fantastic lawyers. But when I read YSL’s point about monochrome shoes, I went ‘hmmm.’
The court has now dismissed Louboutin’s motion. It is a long decision that makes a lot of points that are, imho, color depletion and shade confusion arguments. However at the core of the holding, the court seizes on YSL’s point about the competitive need in fashion to be able to, for example, sell monochrome shoes, and sell red monochrome shoes, and sell red dresses that go with red shoes, and holds that red soles are functional. On to the Second Circuit.
The thought occurs: maybe, Louboutin’s trademark is a red lacquered sole when used with an upper that is any color other than red. According to this decision, any manufacturer’s red shoes could use red soles. But does any manufacturer’s black shoes need red soles?