Last fall, Christian Louboutin made legal headlines when the Second Circuit Court of Appeals ruled that its distinctive red soles of shoes are entitled to trademark protection.
The ruling arose from a trademark infringement lawsuit filed to prevent rival French designer Yves Saint Laurent (YSL) from selling shoes that featured a monochrome red shoe with a red sole. While the court agreed that the red soles were a distinctive symbol that identifies the Louboutin brand, it instructed the U.S. Patent and Trademark Office (USPTO) to limit the trademark to uses in which the red outsole contrasts with the color of the rest of the shoe. Accordingly, it found that the YSL shoes did not infringe.
So while the luxury company has finally resolved its dispute with YSL, its battle with the USPTO over amending the registration appears to just be getting started. In seeking to amend the registration consistent with the instruction of the Second Circuit, the USPTO proposed the following description, in which the underlined text indicates the changes: The color(s) red is/are claimed as a feature of the mark. The mark consists of a lacquered red outsole on footwear that contrasts with the color of the adjoining remaining portion of the shoe (known as the “upper.”) The dotted lines are not part of the mark but are intended only to show the placement of the mark.
Louboutin disagreed with the restrictiveness of the definition and proposed its own: The color(s) red is/are claimed as a feature of the mark. The mark consists of a lacquered red outsole on footwear that contrasts with the color of any visible portions of the shoe. The dotted lines are not part of the mark but are intended only to show the placement of the mark.
After the USPTO concluded that the definition failed to comply with the court’s mandate, Louboutin sought clarification from the Second Circuit. Thus, it appears that the court may again get the final word on the red soled shoes.