Slipping Golden Arches (Protection) Into Red-Soled Heels?
Reviewed by Kyu Hee Chu
The Golden Arches of McDonald’s—perhaps one of the most recognizable and ubiquitous symbols in the world—are without question protected by trademark law. The “Chinese Red”-lacquered soles on Christian Louboutin’s heels—perhaps one of the most recognizable and ubiquitous symbols in the world of high-end designer footwear—on the other hand, are NOT without question protected by trademark law, despite the USPTO granting the designer such protection back in 2008. The disparity in protection here is quite alarming, especially to Mr. Louboutin and other trademark holders—like Tiffany & Co.—who have a vital stake in preserving their color-based trademark identities from a concept known as trademark dilution.
Trademark dilution exists under the recognition that a trademark holder has standing to forbid others from using their mark in a way that lessens its uniqueness. More specifically, dilution is a basis of trademark infringement that only applies when the owner of the mark is able to show that the allegedly infringing use creates a likelihood of confusion as to the source of the product.
To continue the previous analogy, McDonald’s trademark enables the corporation to bring a cause of action against any nonpermissive use, or likeness of use, of the Golden Arches mark, which McDonalds will argue is a dilution of the mark’s unique significance (i.e. the pearly gates to cheap hamburgers and French fries). If only Mr. Louboutin’s shoes were filled with fast food, perhaps his pending appeal in the Second Circuit would stand a better chance…
For those unfamiliar with the case (Christian Louboutin, S.A. v. Yves Saint Laurent America, Inc.), Mr. Louboutin brought a suit against fashion giant Yves Saint Laurent this past summer in the S.D.N.Y. seeking a preliminary injunction following allegations that YSL violated the Lanham Act by producing high fashion shoes with Mr. Louboutin’s trademarked red soles. To Mr. Louboutin’s dismay, however, Judge Victor Marrero, in a flowery opinion analogizing today’s fashion world to Picasso’s Blue Period, denied the injunction and further suggested YSL’s counterclaim cancelling Mr. Louboutin’s trademark was appropriate.
As stated in the opinion, “…in the fashion industry color serves ornamental and aesthetic functions vital to robust competition…” and the use of color in trademarks in the fashion industry has been limited “…only in distinct patterns or combinations of shades that manifest a conscious effort to design a uniquely identifiable mark embedded in the goods.”
Ouch. In other words, Judge Marrero has essentially maintained that Burberry’s trademark “check” is the result of a more “conscious effort” at designing a unique identifiable mark than Mr. Louboutin’s red-lacquered soles.
But wait, aren’t the Golden Arches just that—pattern-less, single-color arches? Indeed, they are. However, trademarks have been given without hesitation to single colors for products outside of the fashion realm (such as with industrial products—like the “canary yellow” mark for Post-it brand) because the fashion industry is deemed particularly unique. Just how ‘unique’ the Second Circuit perceives the industry may very well be what the case turns on.
Right on cue, Tiffany & Co., bearer of the robin egg blue box, filed an amicus brief a few weeks ago in support of Mr. Louboutin in order to avoid the dilution of its own trademark should the Second Circuit agree with Judge Marrero.
Is all of this fair? Should McDonalds’ arches have greater protection from dilution than Louboutin’s soles or Tiffany’s box? In due time, the Second Circuit will assess when color on a ‘fashion’ product is merely a design element (that has no protection from dilution) and when it truly serves as a trademark (and therefore protected from dilution).
As we await the Second Circuit decision, strap on some comfortable shoes for the long run: should he lose on appeal, Mr. Louboutin has already expressed his intent to take the case up to the U.S. Supreme Court for review.