The Battle Over the Color Red

                When I was in law school, I wrote a law review article (unpublished due to the timing of the publication) about the trademarkability of color per se.  At the time, many moons ago, one of the hot topics in trademark law was this district court split about whether color alone can be an indicator of source, and therefore, a trademark.  On one side there was the pink of Owens-Corning Fiberglass insulation (you remember the ads with the Pink Panther saying "Get in the pink."  On the other side was the blue color of Nutrasweet sugar substitute packets.  Ultimately, the Supreme Court in Qualitex v. Jacobson, 514 U.S. 159 (1995), held that color per se was trademarkable as long as it garnered inherent distinctiveness (aka secondary meaning).  The concern at that time was allowing trademark owners to essentially take certain colors out of the public domain.  The United States Supreme Court tried to assuage these fears by requiring the color to acquire distinctiveness or secondary meaning.  But, this appears to remain at issue. 

            It appears that, despite Qualitex v. Jacobson, the matter is still in dispute.  A recent ruling by a Federal Court Judge denied luxury show maker's, Christian Louboutin, request to stop others from selling red-soled.  In particular, Yves Saint Laurent was making shoes with soles of various red shades. The Judge determined that Louboutin would not be able to show that its red-soled shoes deserved trademark protection.  Despite convincing the United States Patent and Trademark Office that the red soles were worthy of trademark registration, the Federal Judge in New York was unconvinced.  The judge determined that the fashion industry relied heavily on color, and as such, the red outsole of Christian Louboutin could not serve as a trademark. 

            Yet, other colors have been able to retain trademark status.  In the fashion world, the plaid of Burberry, Louis Vuitton's monogram, and Tiffany's blue box have all garnered trademark registration and protection.  The New York Judge's ruling seems to contradict the Qualitex ruling.  If the red soles of Louboutin's shoes acquired secondary meaning, then there is no reason not to honor Louboutin's trademark registration.  If consumers link in their mind red soled shoes with Louboutin, then the Judge got it wrong.  There is no reason that color cannot be the subject of a trademark--the courts and USPTO have said as much.