## Facts

- Christian Louboutin, a designer of high-fashion women’s shoes, has used a bright, lacquered red color on shoe outsoles since the early 1990s.
- In 2008, Louboutin obtained a federal trademark registration for a “lacquered red sole on footwear.”
- Louboutin’s commercial use generally featured a red outsole that contrasted with the shoe’s upper.
- Yves Saint Laurent (YSL), a competing fashion house, marketed a 2011 line of monochrome shoes in multiple colors, including an all-red model with a red upper and red outsole.
- Louboutin sued under the Lanham Act and New York law and sought a preliminary injunction barring YSL’s sale of the all-red shoe, alleging infringement and related claims.
- YSL counterclaimed seeking cancellation of the registration, asserting the red sole was ornamental and/or aesthetically functional.
- The district court denied a preliminary injunction, reasoning that a single color could not serve as a trademark in the fashion industry and concluding Louboutin was unlikely to succeed.
- Louboutin appealed the interlocutory denial of injunctive relief.

## Issues

1. Whether a single color used on fashion items can serve as a protectable trademark, or whether a per se bar applies in the fashion industry.
2. Whether Louboutin’s red outsole had acquired secondary meaning as a source identifier.
3. Whether aesthetic functionality barred trademark protection for the red outsole.
4. Whether YSL’s use of a red outsole on a monochrome all-red shoe fell within the protected scope of Louboutin’s mark and supported preliminary injunctive relief.

## Decision

- The Second Circuit rejected a categorical rule that a single color can never function as a trademark in the fashion industry.
- The court held that Louboutin’s red outsole had acquired secondary meaning, but only in the specific configuration where the red outsole contrasts with the remainder of the shoe.
- Exercising authority under Lanham Act § 37 (15 U.S.C. § 1119), the court narrowed the federal registration to cover only a red lacquered outsole that contrasts with the adjoining upper.
- The court affirmed the denial of a preliminary injunction as to YSL’s monochrome all-red shoe because, as narrowed, Louboutin’s mark did not cover an all-red shoe with a non-contrasting red outsole.
- The court remanded for further proceedings consistent with its narrowed construction of the mark.

## Legal Principles

- A single color may serve as a trademark, including in the fashion industry, if it identifies source (e.g., through secondary meaning) and is not functional.
- Secondary meaning for a color mark depends on consumer association between the color (in the manner used) and a particular source; the protectable scope may be limited to the configuration shown by actual marketplace recognition.
- Under aesthetic functionality, a design feature is unprotectable if exclusive rights would significantly hinder competition by placing competitors at a non-reputation-related disadvantage.
- Courts may modify or narrow the scope of trademark registration under 15 U.S.C. § 1119 to reflect the protectable interest supported by the record.
- A preliminary injunction for trademark infringement requires, among other things, a showing of likely success on the merits; conduct outside the mark’s valid scope cannot support such relief.

## Conclusion

The Second Circuit held that color marks are not categorically barred in fashion, recognized limited protectability for Louboutin’s contrasting red sole based on secondary meaning, narrowed the registration accordingly, and affirmed denial of injunctive relief because YSL’s monochrome all-red shoe fell outside the mark’s properly limited scope.


Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc., 696 F.3d 206 (2d Cir. 2012)