The Virginia Business Litigation Blog
A new line of women’s footwear now being sold by Yves Saint-Laurent has high-end French shoe designer Christian Louboutin seeing red. Louboutin’s companies, asserting that a new line of red Yves Saint-Laurent shoes violates their U.S. trademark, recently filed a trademark infringement suit in federal court in Manhattan against YSL. The lawsuit raises the interesting question: can a color be trademarked?
Louboutin’s trademark lawyers explain that the issue isn’t about ownership of a color so much as whether a shoe designer can have a proprietary interest in the use of distinctive red soles. According to the complaint, Louboutin first thought of the idea of painting the outer soles of his shoes red in 1992. Ever since then–for nearly two decades–every shoe in his collection has had that distinctive stylistic feature.
“Louboutin Footwear is instantly recognizable as a result of Plaintiffs’ trademark red outsole,” the complaint declares. “The location of the bright color on the outsole of a woman’s pump is said to provide an alluring ‘flash of red’ when a woman walks down the street, or on the red carpet of a special event.” The complaint provides a long list of 
celebrities who have worn the shoes and even includes two photos of the Carrie Bradshaw character on Sex and the City, played by Sarah Jessica Parker, wearing the shoes with the “alluring flash of red.”
Louboutin applied for a U.S. trademark for the “lacquered red sole” and received a trademark in 2008. According to the complaint, the U.S. Patent and Trademark Office found that the mark “had acquired distinctiveness based on its many years of continuous use in commerce,” consumer recognition, and media attention.
The Supreme Court has held that under some circumstances, a color can be trademarked. To win its case, Louboutin will need to show that red outsoles are associated with his design company by most women’s high-end shoe purchasers. In other words, he will need to show that the red soles have acquired “secondary meaning” in the minds of his customers and prospective customers. (Think of brown delivery trucks. You associate them with UPS, right? That’s a trademark.)
Louboutin will also need to show that the red color is not “functional” but decorative. The idea here is that no one manufacturer should be able to monopolize the use of a color that is an integral part of the way the product works (orange flotation devices, for example). It is not clear how the so-called “aesthetic functionality” test will apply to high-fashion items like shoes that cost more than $1,000 a pair.