Trademarking Red: Color Trademarks and Red Bottom Shoes

By: Snack Toronto

The History and Popularity of the Red Bottom Shoe

The year is 1992 and Parisian designer Christian Louboutin is examining prototypes of a new line of shoes in his workshop.  [1].  He is pleased with the results, except for one thing: the sole.  [2].  The black color of the sole made the shoes appear chunkier than what he had drawn up in sketches.  [3].  What happened next is nothing short of a movie scene:  Louboutin looked over and saw his assistant painting her nails a bright shade of red, and a stroke of inspiration hit him.  [4].  He grabbed the nail polish and started painting the soles of one the prototypes the now-iconic shade of red Louboutin’s is famous for.  [5].

Now, thirty plus years later, the red (specifically, Pantone 18 1663TP) bottom shoes are ubiquitous in the closets of celebrities, models, and performers around the world.  [6].  Kate Moss, an aficionado of Louboutins, had so many pairs that in 2012, Louboutin named not just one line, not two, but three lines of stilettos after her: “Kate,” “So Kate,” and “Sporty Kate”.  [7].  Another top celebrity client, Taylor Swift, had over 250 custom red bottom shoes made for her record-breaking Eras Tour in 2023.  [8].

Louboutins are synonymous with luxury and wealth, and as best said by Cardi B’s 2017 chart-topping hit Bodak Yellow, “[t]hese expensive, these is red bottoms, these is bloody shoes.”  [9].  Hand-crafted in Italy, a pair of Louboutin shoes retail for several hundred dollars to several thousand dollars a pair (with some pairs of boots on sale for over $12,000), and over one million are produced each year.  [10].

By: Ines Hegedus-Garcia

Christian Louboutin built a ruby empire around the iconic sole.   This article reviews Christian Louboutin’s quest to protect and enforce the red bottom shoes in the United States using trademark law.  

Trademark Law Regarding Color

 To begin, we ask, what is a trademark?  The Lanham Act says that trademarks “include[] any word, name, symbol, or device, or any combination thereof” which is used to identify the source of goods.  [11].  Common trademarks include logos, slogans, and names.  However, the broad language of the Lanham Act allows for any “symbol.”  A generous definition of a symbol is a something that represents or stands for something else. 

In 1995 in Qualitex Co. v. Jacobson Prods. Co., a simple question came before the United States Supreme Court: could a color by itself be a symbol for a source of goods? In other words, can you trademark a color?

"SVG1.1 Color Swatch" by Tom Cowap is marked with CC0 1.0.

The Supreme Court held, unanimously, that when a color meets the “ordinary trademark requirements” it may be trademarked.  [12].  In that case, the Supreme Court held that where a color has attained secondary meaning, i.e., the color is recognized by the public to identify a brand (a source of goods) then it may be trademarked.  [13].  However, the Supreme Court went on to say that if a color was a functional feature of the product, it could not be trademarked under the functionality doctrine, which prohibits unfair competition by allowing one to trademark a useful or functional product feature.  [14].

The functionality doctrine was a central feature in Brunswick Corp. v. British Seagull Ltd., where the plaintiff filed a trademark application for the color black for marine outboard engines.  [15].  In that case, the Trademark Trial & Appeal Board denied (and the Federal Circuit Court of Appeals later affirmed) plaintiff’s trademark application because “the color black applied to its engines is de jure functional” and lacked secondary meaning.  [16].  The use of black paint on engines was functional, not in the sense that the engine couldn’t function without it being painted black, but the black paint served a functional purpose because consumers strongly preferred black engines for aesthetic purposes.  [17].  In other words, the black paint was not chosen to function as a source identifier for who manufactured the marine engines, but rather it was chosen to be more appealing to consumers.  To that point, the Federal Circuit found that two other marine engine manufacturers used black or substantially black engines for the same reason. [18].  

Thus, under US law, a color may be trademarked if it meets “ordinary trademark requirements,” and two key considerations as to whether a color may be trademarked are whether the color has acquired secondary meaning and whether the color is a functional feature of a product.

Christian Louboutin’s US Trademark Registration and Litigation

Over a decade after Qualitex was decided Christian Louboutin applied for, and in 2008 was granted, a trademark registration for “a lacquered red sole on footwear.”  [19].

Reg. No. 3,361,597 Mark

The mark consists of a red lacquered outsole on footwear that contrasts with the color of the adjoining (“upper”) portion of the shoe. The dotted lines are not part of the mark but are intended only to show placement of the mark.

In 2011, fashion rival Yves Saint Laurent introduced a new line of “monochrome” shoes available in purple, green, yellow, and red.  [20].  The monochrome shoes were entirely the color of choice, i.e., the green shoes were entirely green, including the sole.  [21].  

The Lanham Act protects trademark owners by providing them a cause of action to hold others liable when they use the same mark or a similar mark if the use is of such a similar mark is likely to cause confusion amongst consumers.  [22].  Christian Louboutin sued Yves Saint Laurent for, among other causes of action, trademark infringement alleging likelihood of confusion with their registered red sole trademark.  [23].  Thus, the question before the trial court was whether a consumer would confuse Yves Saint Laurent’s red monochrome shoe with Christian Louboutin’s trademarked red-bottom shoes.  [24].  The trial court did not find that Christian Louboutin could establish a likelihood of confusion, and Christian Louboutin appealed to the Second Circuit Court of Appeals.  [25].      

The appeal was somewhat of a mixed bag for Christian Louboutin.  On one hand, the Second Circuit concluded that the red sole trademark had acquired secondary meaning.  [26].  Which, in light of the Supreme Court’s decision in Qualitex, was a very positive finding.  However, while the Second Circuit upheld the validity of the trademark, it limited it to “uses in which the red outsole contrasts with the remainder of the shoe.”  [27].  Finally, the Second Circuit held that because the trademark was limited to uses where the red sole contrasts the rest of the shoe, there was no likelihood of confusion with Yves Saint Laurent’s red monochrome shoes.  [28]. 

While this was likely not the outcome Christian Louboutin wanted, the Second Circuit upholding the validity of the red sole trademark cannot be understated.  Even though Qualitex gave the green light for single-color trademarks almost thirty years ago, the road to trademarking color is not easy.  In order to survive the functionality doctrine, the color cannot be chosen on the basis of consumer appeal.  This is a significant limitation because brands generally want their trademarks, i.e., their logos, slogans, and so forth, to appeal to consumers.  Further, the standard set forth by the Supreme Court in Qualitex, that the color has to be recognized by the public to identify a source of goods, is easier said than done.  A mountain of advertising dollars must be expended over the course of many years to create an association of a color with a company in the minds of consumers.    

"Louboutin III" by laverrue is licensed under CC BY 2.0.

Since it has been registered, Christian Louboutin has fiercely protected its red bottom sole trademark.  In 2014, the trademark gained incontestable status pursuant to 15 U.S. Code § 1065 of the Lanham Act.  [29].  Incontestability under the Lanham Act grants the trademark special status, insulating it from several legal challenges.  [30].  Furthermore, the trademark was granted a 10-year renewal in 2017.  [31].

Christian Louboutin also vigorously defends its trademark in court, most recently in 2023 when Christian Louboutin filed suit against shoe store retailer Vinci Leather Inc.  [32].  In its Complaint, Christian Louboutin alleged that, among other things, Vinci Leather sold multiple styles of shoes that knock-off Christian Louboutin’s red sole trademark.  [33].  

According to the Complaint, a first cease-and-desist letter was sent and the allegedly infringing shoes were removed from Vinci Leather’s website.  [34].  A year later, another cease-and-desist letter was sent to Vinci Leather regarding other allegedly infringing shoes.  [35].  Once again, the allegedly infringing shoes were removed from Vinci Leather’s website.  [36].  However, the Complaint alleges that some time later, Christian Louboutin saw that the allegedly infringing shoes were again listed for sale on Vinci Leather’s website, despite receiving two cease-and-desist letters from Christian Louboutin.  [37].  Ultimately, the case settled out of court about a year after the Complaint was filed.  [38]. 

The red bottom shoe trademark is an incredibly valuable asset to Christian Louboutin, and they continue to protect it, and aren’t afraid to enforce it.

Sources

[1] “La vie en red (sole) The birth of an iconic signature” Christian Louboutin. Accessed 27 September 2024. <https://us.christianlouboutin.com/us_en/red-sole#:~:text=As%20fate%20would%20have%20it,iconic%20calling%20card%20was%20born>.

[2] Id.

[3] Id.

[4] Id.

[5] Id.

[6] HFG Law & Intellectual Property. Christian Louboutin and “the war of the red-soled stilettos.” 23 October 2019. <https://www.lexology.com/library/detail.aspx?g=f7686993-f62b-48b4-a849-2b00ceb5f8c3>.

[7] Samanta Tse. The shoe with staying power: Louboutin’s red sole turns 30. 20 November 2023. <https://www.cnn.com/style/christian-louboutin-red-bottom-soles/index.html>.

[8] Christian Allaire. The Secret Behind Taylor Swift’s Superstar Shoes? Red Bottoms—and Loads of Crystals. 23 May 2024. <https://www.vogue.com/article/taylor-swifts-era-tour-shoes>.

[9] Belcalis Marlenis Cephus, Bodak Yellow, on Invasion of Privacy (Atlantic Records 2017).

[10] Giacomo Tognini. Shoe designer Christian Louboutin is now a billionaire. 02 April 2024. <https://www.businessoffashion.com/people/christian-louboutin/#:~:text=Louboutin%20now%20sells%20over%20one,Louboutin%20grew%20up%20in%20Paris>; “Santia Botta Lucky” Christian Louboutin. Accessed 27 September 2024. <https://us.christianlouboutin.com/us_en/santia-botta-lucky-terra-lionne-multi-32406356606.html>.

[11] 15 U.S.C. § 1127

[12] Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 161 115 S. Ct. 1300 (1995).

[13] Id. at 163.

[14] Id. at 164.

[15] Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 1529 (Fed. Cir. 1994).

[16] Id. at 1530.

[17] Id. at 1529.

[18] Id.

[19] Christian Louboutin S.A. v. Yves Saint Laurent Am., Inc., 778 F. Supp. 2d 445, 448 (S.D.N.Y. 2011); See Trademark Status and Document Retrieval (TSDR) for U.S. Registration No. 3,361,597.

[20] Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc., 696 F.3d 206, 213 (2d Cir. 2012).

[21] Id.

[22] 15 U.S.C. § 1114(1)(a); Jack Daniel’s Props. v. VIP Prods. LLC, 599 U.S. 140, 146-47, 143 S. Ct. 1578 (2023) (“the registering trademark owner receives certain benefits, useful in infringement litigation . . . [t]he Lanham Act also creates a federal cause of action for trademark infringement. In the typical case, the owner of a mark sues someone using a mark that closely resembles its own. The court must decide whether the defendant’s use is ‘likely to cause confusion, or to cause mistake, or to deceive’).

[23] Christian Louboutin S.A., supra note 16, at 213.

[24] Christian Louboutin S.A., supra note 15, at 447.

[25] Id. at 457; Christian Louboutin S.A., supra note 16, at 212.

[26] Christian Louboutin S.A., supra note 16, at 212.

[27] Id.; see TSDR, supra note 19.

[28] Id.

[29] See TSDR, supra note 19.

[30] Park 'n Fly v. Dollar Park & Fly, 469 U.S. 189, 205, 105 S. Ct. 658 (1985).

[31] Supra note 24.

[32] Complaint at 1, Christian Louboutin SAS et al v. Vinci Leather, Inc., 23-cv-03806 (S.D.N.Y. 2023); see Laurel Deppen. Louboutin files lawsuit over red-sole trademark. 8 May 2023. <https://www.fashiondive.com/news/louboutin-lawsuit-vinci-leather/649697/>.

[33] Supra note 25, Complaint at 29.

[34] Supra note 25, Complaint at 41-42; Deppen, supra note 32.

[35] Supra note 25, Complaint at 43-44.

[36] Id. at 44.

[37] Id. at 45-46.

[38] Letter, Christian Louboutin SAS et al v. Vinci Leather, Inc., 23-cv-03806 (S.D.N.Y. 2023), ECF No. 43; Stipulation of Voluntary Dismissal, Christian Louboutin SAS et al v. Vinci Leather, Inc., 23-cv-03806 (S.D.N.Y. 2023), ECF No. 46.