The red hot dispute continues between Christian Louboutin and Yves Saint Laurent (“YSL”) over Louboutin’s red sole shoe trademark. On January 16, 2013, the U.S. Patent and Trademark Office rejected Louboutin’s request to broaden its protection in its red sole shoe mark.
The USPTO’s recent decision is rooted in a September 2012 Second Circuit ruling, which held that Louboutin’s red sole shoe trademark was valid, but that the USPTO should modify the trademark registration to limit it to protect only red soles that contrast with the rest of the shoe. The Second Circuit found that the trade dress was sufficiently distinctive to merit protection only where the red sole contrasts with the color of the rest of the shoe. Thus, the Court found that YSL’s monochrome red shoes with red soles did not infringe Louboutin’s trademark. Christian Louboutin S.A. v. Yves Saint Laurent Am., Inc., 2012 U.S. App. LEXIS 18663 (2d Cir. Sept. 5, 2012).
In an attempt to follow the Second Circuit’s mandate, in December 2012, the USPTO proposed revising the description of Louboutin’s mark to cover a red sole “that contrasts with the color of the adjoining remaining portion of the shoe (known as the ‘upper’).” On January 4, Louboutin argued that instead the description should cover a red sole “that contrasts with the color of any visible portions of the shoe” (emphasis added). On January 8, YSL argued that Louboutin’s proposed amendment was not the intention of the Second Circuit because it would mean that a red shoe with a red sole and, for example, “a black heel cap or a gold buckle fastened on the toe,” would infringe the red sole mark.
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