Should fashion designers be entitled to trademark protection for single color trade dress of fashion articles? On September 5, 2012, the Second Circuit held in the affirmative. The Second Circuit found that the District Court’s conclusion that a single color can never serve as a trademark in the fashion industry was based on an incorrect understanding of the doctrine of aesthetic functionality and was therefore in error. The Second Circuit held that Louboutin’s trademark in its red soled shoes was valid and enforceable. The Second Circuit overturned in part the District Court’s denial of a preliminary injunction against Yves Saint Laurent (“YSL”) for its sale of red soled shoes. The decision is a victory for trademark owners claiming protection of single color trademarks, particularly in the fashion industry.

Background -

Christian Louboutin sued YSL for trademark infringement and other claims related to YSL’s sale of shoes with a red outsole. Louboutin claims to have been using a red outsole on its shoes as a source identifier or trademark since 1992. In 2008 Louboutin obtained a trademark registration from the United States Patent and Trademark Office for trade dress described as “lacquered red sole on footwear” (Louboutin’s “Red Sole Mark”), as shown below.

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