Last fall, Christian Louboutin made legal headlines when the Second Circuit Court of Appeals ruled that its distinctive red soles of shoes are entitled to trademark protection.

The lawsuit was filed to prevent rival French designer Yves Saint Laurent (YSL) from selling shoes that featured a monochrome red shoe with a red sole. While the court  agreed that the red soles were a distinctive symbol that identifies the Louboutin brand, it instructed the U.S. Patent and Trademark Office (USPTO) to limit the trademark to uses in which the red outsole contrasts with the color of the rest of the shoe. Accordingly, it found that the YSL shoes did not infringe.

So while the luxury company was not victorious in its dispute with YSL, its battle with the USPTO over amending the registration appears to just be getting started.  The USPTO proposed the following description in accordance with the ruling from the Second Circuit (the underlined text indicates the changes): The color(s) red is/are claimed as a feature of the mark.  The mark consists of a lacquered red outsole on footwear that contrasts with the color of the adjoining remaining portion of the shoe (known as the “upper.”)  The dotted lines are not part of the mark but are intended only to show the placement of the mark.

Louboutin disagreed with the restrictiveness of the definition and proposed its own: The color(s) red is/are claimed as a feature of the mark.  The mark consists of a lacquered red outsole on footwear that contrasts with the color of any visible portions of the shoe.  The dotted lines are not part of the mark but are intended only to show the placement of the mark.

After the USPTO concluded that the definition failed to comply with the court’s mandate, Louboutin sought clarification from the Second Circuit. So,  it appears that the court may again get the final word on the red soled shoes.

How Can I Help?

If you, or someone you know, need help with any Intellectual Property issue, from filing a patent, trademark or copyright, or just advice regarding how best to protect your ideas and your brand, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman