Intellectual Property Insights from Fishman Stewart
Mini Article – Volume 21, Issue 5
Let your brand do the walkin’:
A look at Louboutin’s “red sole” trademark
By Lily Barash
When one thinks of a trademark, brand names ordinarily come to mind, including APPLE®, FACEBOOK®, AMAZON®, JUST DO IT® and other well-known “word marks.” However, “trademark” has a much broader definition and can include any words, letters, numbers, symbols, designs or any combination of these designations. Potentially, anything that can be perceived by the human senses can function as a trademark.
Indeed, Hasbro recently obtained U.S. registration protection for the “scent” of Play-Doh. Hasbro’s registration defines its mark as “a unique scent formed through the combination of a sweet, slightly musky, vanilla-like fragrance, with slight overtones of cherry, and the natural smell of a salted, wheat-based dough.”
Along related lines, Edgar Rice Burroughs, Inc. obtained a federal registration for the unique Tarzan yell. This “sound mark” is registered for toy action figures.
And then there’s the famous French designer Christian Louboutin, who took the definition of trademark one step further and obtained U.S. registration protection for a “color mark” formed by the shoe designer’s famed red sole.
It all started in 1993 at his shop in Paris, when Louboutin became distracted by his assistant nearby painting her nails the color red. Looking for inspiration, he took the polish and began painting the soles of a prototype pair of shoes. At that very moment, the famous Louboutin red soles were born.
Fifteen years later, in 2008, the U.S. Patent and Trademark Office awarded Louboutin a registration for a trademark which has come to be recognized by fashionistas and others alike as uniquely identifying Louboutin and distinguishing him from other designers. This trademark is defined in the registration as “a red lacquered outsole on footwear that contrasts with the color of the adjoining (“upper”) portion of the shoe.” The trademark is depicted in the registration with the following illustration:
Louboutin’s rights in his color mark were upheld by the Second Circuit Court of Appeals in the notable case Christian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc.
Thus, protecting brands can transcend traditional “word marks”; just ask Louboutin, his red soles will do the talkin’.
In the next edition of FishBits mini articles, we take aim at a dispute between LEGO, a toy maker, and Culper Precision, a company that builds and modifies custom firearms.
Published August 13, 2021
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