This Wednesday, fashion designer Christian Louboutin won a major trademark victory in the Second Circuit Court of Appeals—a federal appeals court with jurisdiction over appeals from federal district courts in New York, Vermont, and Connecticut.  The Second Circuit held that Louboutin’s trademark of its signature “China Red” shoe soles is valid if “the red outsole contrasts with the color of the remainder of the shoe” as the design has “acquired limited ‘secondary meaning’ as a distinctive symbol that identifies the Louboutin brand.”

The Second Circuit decision partially reverses the decision of the trial court, the Southern District of New York (SDNY), that Louboutin’s lacquered red soles trademark was overly broad, and, thus, not deserving of the protections of the trademark laws.  Such appeal argued that, “design functionality” is not allowed to be trademarked, but that brand recognition that may include aesthetic appeal which is not an otherwise functional or useful feature in a product is allowed such trademark protection.

Originally, Judge Merrero of SDNY ruled that “a color, being an essential element of fashion design, could not be trademarked, despite the strong connection in the public mind between red soles and Louboutins.”  Judge Merrero’s broad ruling on color in fashion design posed a threat of applying to the entire fashion industry rather than just to Louboutin as case precedent necessitated individual inquiry in such matters.  Therefore, Louboutin’s appeal was aided by supporting amicus briefs (or “friend of the court”) from the International Trademark Association and Tiffany & Co.

In its decision, the Second Circuit relied on the same Supreme Court precedent as SDNY (Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995) (color is trademark protectable if the coloring distinguishes a manufacturer’s goods without altering the function of the product)), yet found that Louboutin’s lacquered red sole clearly distinguishes its brand in shoes where sole color contrasts strikingly with the shoe color.

All parties involved count the Second Circuit’s ruling as a win: first, Louboutin’s trademarked lacquered red sole was upheld in all situations where the sole color contrasts with the shoe color; second, as Defendant and competing fashion designer Yves Saint Laurent uses red soles in monochromatic shoes, such use was deemed acceptable after the Second Circuit’s narrowing of Louboutin’s trademark; and, last, the high fashion industry has now reaffirmed situations where aesthetic appeal may be trademarked.