In Defense of Color Trademarks: INTA Submits Amicus Brief in Christian Louboutin v. Yves Saint Laurent

On Monday, the International Trademark Association (“INTA”) filed an amicus curae brief  with the United States Court of Appeals for the Second Circuit in Christian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc.. In that brief, INTA argued that the lower court’s decision should be vacated and remanded on the basis that the court did not properly evaluate Louboutin’s federally registered trademark, failed to accord that mark the legal presumption of validity to which it is entitled under federal law, and did not use the appropriate test for aesthetic functionality.

The matter pending before the Second Circuit is an appeal from the U.S. District Court for the Southern District of New York’s denial of Louboutin’s motion for a preliminary injunction to halt the sale by Yves Saint Laurent America Inc. and its affiliates (“YSL”) of shoes having red soles. In the lower court’s decision, Judge Victor Marrero denied Louboutin’s motion, finding that Louboutin was unlikely to be able to establish that ownership of a protectable mark, since color cannot serve as a trademark if it is functional. Louboutin then filed the instant appeal. Gibbons summarized the lower court’s decision in an earlier blog.

In its amicus brief, INTA argues that the Southern District did not give due deference to Louboutin’s federal registration and the presumption of validity it confers, and that the decision was not based on a finding that YSL had shown “by a preponderance of the evidence” that Louboutin’s mark was not entitled to protection, as the law requires. The brief also criticizes the Southern District’s decision on the basis that it misconstrued Louboutin’s asserted trademark rights as a broad claim to the color red as applied to shoes. However, INTA noted, the mark is limited to a lacquered red that is specifically placed on the sole of a shoe.

The INTA brief also includes a review of the “somewhat checkered history” of the doctrine of aesthetic functionality, which it contends the Southern District misapplied in its decision. That analysis requires a finding that “certain factors of the design are essential to effective competition,” and INTA criticized the court for failing to apply that test.

This litigation is significant because it has the potential to limit protectability of color trademarks, particularly in the field of fashion. INTA cautions that failure to vacate and correct the Southern District’s decision will both damage brand owners and increase the potential for consumer confusion.

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