An interesting trademark issue I recently came across involves the rights to red soles on women’s shoes. This issue, as many are in trademark law, is not that simple.
The shoe designer Christian Louboutin is known for the distinctive red soles that he uses.
He registered what is called a “colour mark,” presumably giving him protection from others selling shoes with red soles. However, Yves Saint Laurent began selling red shoes with red soles. This gave rise to the current lawsuit between the two companies which is pending in a federal appellate court.
The right to protect a color, or more accurately, design as a trademark, is rather complex. If a color is deemed functional, such as green for farm equipment, it cannot be trademarked.
There’s little doubt that the marketplace identifies and differentiates this color with John Deere equipment. John Deere can take advantage of this recognition. However, it cannot prevent other farm equipment manufacturers from using green.
The same seems to be true with Caterpillar’s yellow road machines. Caterpillar does have trademark protection for its “Caterpillar Yellow” logo. However, yellow is a functional color for road construction, so Cat can’t prevent other companies from manufacturing yellow colored equipment.
On the other hand, if a color has no functional value but merely identifies the maker, it can be protected. Consider Owens Corning fiberglass insulation.
But let’s get back to fashion. Here it can go either way. It can be argued that Louboutin’s red soles are not functional…that is, their only purpose is to identify the maker of these shoes. Or it can be argued that in fashion, all colors are functional, and it would be unfair to prevent a designer from using any particular color.
This is the issue that a federal appeals court will rule on soon. The only thing we can be sure of is that, in the end, one of the parties will see red.
