Blue Voices Support for Red

By Jennifer Williams

Reviewed by Kyu Hee Chu

Recently Christian Louboutin sued Yves Saint Laurent (YSL) claiming that the red-soled shoes that YSL was selling were in violation of the mark that Louboutin obtained in 2008.  Louboutin went further and asked for an injunction, which would prevent YSL from selling the shoes while the case was being argued.  The injunction was denied and the court questioned whether or not a designer should have sole rights to the use of a color. It was ultimately determined that designers should not be granted “trademark protection to any single color that is used in any ‘fashion item,’ even when the color has achieved ‘secondary meaning’ and is associated with a single brand.”  This rule has immediate ramifications for Christian Louboutin and its famous red sole as well as many other designers and brands.

As mentioned previously, one such brand is Tiffany & Co. who has reason to be nervous about the protection of it famous robin’s-egg blue.  Tiffany filed an amicus curiae brief in which it discusses the value of its color, which is used to advertise and package its products. Consumers know this distinctive shade and packaging as being associated with Tiffany and it has become unanimous with the brand.  Any girl knows when she gets a robin’s-egg blue box or bag, a spectacular and shimmering jewel awaits and that it came from Tiffany & Co. The amicus curiae brief states that “the blue Tiffany box is so well known that consumers instantly associate it with Tiffany” and goes on to say that “the color is so inextricably associated with Tiffany that consumers refer to is as ‘Tiffany blue.’”

Tiffany currently has trademark registration for the blue box with white ribbon as well as the robin’s-egg blue color per se as used on the boxes, shopping bags, and the cover of its catalogs. Clearly Tiffany has an interest in protecting its marks including the Tiffany blue color. Tiffany submits the amicus curiae brief in an effort to point out that a blanket rule preventing trademark protection for any single color used on any fashion item was unnecessary. Further, Tiffany & Co. suggests that whether a mark such as a color has achieved secondary meaning or is subject to a defense of functionality should be decided on a case-by-case basis.

Tiffany and Co. is simply asking for a case-by-case analysis when it comes to protecting a color, however, the implications of not allowing designers to trademark a color that has become more known as a part of the brand than as a color by its own right are massive. The fashion industry already struggles with the ability to protect designs to prevent them from being counterfeited or copied. This latest holding taking away a designer’s ability to trademark a color when used on a fashion design just makes it even more difficult to protect a design despite the many hours of work and skill that go into creating a design.

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