INTA Files Amicus Brief on Behalf of Christian Louboutin

By Jaiana Casanova

Reviewed by Kyu Hee Chu

As the Christian Louboutin v. Yves Saint Laurent saga continues, following Tiffany’s, the International Trademark Association (INTA) has filed an amicus brief with the United States Court of Appeal for the Second Circuit in support of Christian Louboutin’s famous red-sole. In this brief, INTA argues that the lower court’s decision for preliminary injunction should be vacated and remanded on the basis that the court erred in its analysis of the validity of the trademark and that they did not properly apply the aesthetic functionality doctrine.

The International Trademark Association (INTA) “is a not-for-profit organization dedicated to the support and advancement of trademarks and related intellectual property concepts as essential elements of trade and commerce.”[1] This organization, which has been around since 1878, has a well renowned reputation within the intellectual property world, giving its amicus curiae brief a great credibility within the industry.

In its amicus brief, the organization refers to two specific errors made by the lower court, but does not refer to the main lawsuit for trademark infringement and dilution, or whether a preliminary injunction should be entered at all.

The main arguments are as follows:

  1. The court started with the assumption that Christian Louboutin’s registration was invalid, which is contrary to the benefits of having a trademark registration. In addition, it construed the registration as a broad claim of “the color red” for use of women’s high-fashion shoes, instead of the narrower claim stated in the registration defined as “lacquered red sole on footwear.” In this way, the court basically overlooked the current trademark registration and evaluated the mark as if it was just a color that any artist would use, and not as if Louboutin has been using it like a source-identifying feature of its goods.
  2. The District Court erred in finding the Red Sole Mark to be functional, thus invalid. By applying the controversial doctrine of aesthetic functionality, it did not apply the test in a proper manner, which requires that the use of the design is essential to achieve an effective competition.

INTA, standing in the same position as Tiffany’s, concluded that if this decision remains uncorrected, it could have far reaching consequences for brand owners, and that the results of the examination process of the USPTO trademark registration could be overturned arbitrarily, allowing third parties to take advantage of well-recognized brands, increasing as a consequence, the possibilities of consumer confusion.

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