Louboutin Keeps Its Trademark Registration


[author: ]  

Louboutin attempts to hypnotize you. 

The most publicized trademark lawsuit in 2012 has now come to a close, and while Louboutin was denied its motion for a preliminary injunction, the company should be happy it didn’t lose everything.

As you might recall, the District Court initially denied Louboutin’s motion in August 2011 and then went one step too far, claiming that color alone could not be a trademark in fashion industry. The decision was surprising, and I thought overreaching. Louboutin obviously appealed, and argued against the decision before the Second Circuit in January 2012.

Eight long months later, the Second Circuit finally issued its decision, and as predicted here, reversed the District Court insofar as it purported to deny trademark protection to Louboutin’s use of contrasting red lacquered soles, but affirmed the District Court’s refusal to issue a preliminary injunction. The Second Circuit panel was courteous in its decision, stating that the District Court addressed “a difficult and novel issue of trademark law,” but nevertheless made it clear that the Supreme Court in deciding Qualitex specifically forbade the implementation of a per se rule that would deny protection for the use of a single color as a trademark in a particular industrial context. Fashion, dry cleaning, whatever.

The Second Circuit then went on to limit Louboutin’s registration to “only those situations in which the red lacquered outsole contrasts in color with the adjoining ‘upper’ of the shoe.” Because the shoe produced by YSL was a monochrome red shoe, there was no reason for an injunction.

In short, all this lawsuit did for Louboutin was to limit its own registration and cost a lot of money. My two cents? If Louboutin is serious about enforcing its what-we-now-know-is-valid trademark, then the company should start going after actual infringers, like the 16 year old in Ireland, and stop risking its intellectual property.

Written by:

Published In:

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Winthrop & Weinstine, P.A. | Attorney Advertising

Don't miss a thing! Build a custom news brief:

Read fresh new writing on compliance, cybersecurity, Dodd-Frank, whistleblowers, social media, hiring & firing, patent reform, the NLRB, Obamacare, the SEC…

…or whatever matters the most to you. Follow authors, firms, and topics on JD Supra.

Create your news brief now - it's free and easy »

All the intelligence you need, in one easy email:

Great! Your first step to building an email digest of JD Supra authors and topics. Log in with LinkedIn so we can start sending your digest...

Sign up for your custom alerts now, using LinkedIn ›

* With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name.