Tuesday, November 8, 2011

Louboutin red sole trademark dispute gets Tiffany-twisted

Authors:  Robin Barnes and Hamad Hamad             

Whether you are a regular fashionista or a certified shoe fanatic, you probably know about Christian Louboutin’s suit against Yves Saint Laurent alleging infringement of Louboutin’s registered trademark for red soles.  After the district court denied Louboutin’s preliminary injunction request and set a hearing to consider cancelling Louboutin’s registration, Louboutin appealed to the Second Circuit. Last week, Tiffany & Co. filed a brief supporting Louboutin’s position.
You can watch this CBS News segment for a quick recap of the case.
One issue on appeal is the breadth of Louboutin’s registration, which simply recites that the “mark consists of a lacquered red sole.”  While the court’s opinion is not perfect, it astutely questioned the breadth and vagueness of this description.  Imagine the difficulty for competitors – are fire engine, cherry, and brick red all covered by Louboutin’s registration?  There are difficulties on the consumer side too – can multiple shades of red establish sufficient secondary meaning to support the registration, and can the average person even tell the difference between certain shades?

 Interestingly, the red color depicted in Louboutin’s registration for the color of the sole of a shoe

is not the same color used in its design mark registration,

, which makes you wonder if Louboutin even knows his own shade of red. 
Tiffany’s interest is not surprising given the trademark registrations on its famous blue boxes and little blue bags.  In an effort to protect its own blue registration, Tiffany argued that the court erred by creating a rule that a single color can never be a valid mark for fashion items.  While the court did seriously question the ability to protect a single color for fashion items, its decision was ultimately based on its determination that Louboutin didn’t have a protectable mark, not just because a single color was claimed.  Although functionality issues were addressed by the court and by Tiffany, what’s interesting here is the discussion and concerns over the broad assertion of trademark in the single color “red.”
The issue of the breadth of a single claimed color is interesting because of the contrast between Louboutin’s and Tiffany’s registrations.  Tiffany’s registrations claim “robin’s-egg blue.”  Would a similar level of specificity have satisfied the Louboutin court?  Who knows, but Tiffany could at least rely on a distinct shade of blue if it were in Louboutin’s position, perhaps alleviating the court’s concerns about an overly broad and vague registration.
Even more interesting (in a non-legal sense) is the Tiffany twist: the law firm that wrote Tiffany’s amicus brief also prosecuted its robin’s-egg blue registrations AND Louboutin’s red sole registration.  Was there a strategic decision by counsel to go broad in Louboutin’s application and narrower in Tiffany’s?  It’s also possible (perhaps probable?) that Louboutin instructed his counsel to seek broad trademark protection for “red.”  Until the Second Circuit rules, however, it’s too early to draw concrete conclusions for prosecution strategy, but this distinction suggests that specificity in single color mark descriptions (at least in the fashion industry) may avoid future litigation complications.