Christian Louboutin SA Shoe

The United States Court of Appeals For the Second Circuit ruled today that French shoemaker Christian Louboutin SA is entitled to trademark protection for its red-soled high-heeled shoes, except when the shoe is also red. The lower court denied Louboutin’s request for a preliminary injunction against Yves Saint Laurent’s (YSL) red monochromatic shoe because Louboutin’s red-sole trademark was “likely not enforceable.” The court found that the district court’s per se rule that a “single color can never serve as a trademark in the fashion industry” is inconsistent with the Supreme Court’s decision in Qualitex Co. v. Jacobson Products Co. The court also held that Louboutin’s red, lacquered outsole trademark had acquired “limited” secondary meaning, except to the extent the shoe is also red. The court ultimately held that the YSL shoe Loubtouin sought to enjoin, a monochromatic red shoe with a red sole, does not violate Louboutin’s rights and thus the district court correctly refused to preliminarily enjoin YSL from selling that shoe. The court remanded the case to consider YSL’s counterclaims. Because the court found the YSL design was not a use of Louboutin’s trademark, it did not address whether YSL’s use of a red outsole causes impermissible consumer confusion or whether the Louboutin mark, as modified, is functional. Click here for the decision.

This article was prepared by Jessica S. Parise ( / 212.318.3397) in Fulbright’s Intellectual Property and Technology Group.