The short answer
In Christian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc. (No. 11-3303-cv, 5 September 2012) the US Court of Appeals for the Second Circuit held that colour alone can sometimes be a trademark in fashion. Louboutin's red sole mark was valid but limited to a red lacquered outsole that contrasts with the upper, so YSL's all-red shoe did not infringe.
Case snapshot
| Item | Detail |
|---|---|
| Court | US Court of Appeals for the Second Circuit |
| Docket | No. 11-3303-cv |
| Decided | 5 September 2012 (opinion of Judge Jose A. Cabranes, 31 pages) |
| Parties | Christian Louboutin S.A. v Yves Saint Laurent America Holding, Inc. |
| IP area | Trademark: colour in fashion, aesthetic functionality |
| Result | Mark valid but limited; denial of injunction against YSL upheld; partly remanded |
Background and facts
Louboutin is known for the red lacquered outsole of its shoes. YSL sold a monochrome red shoe with a red sole. Louboutin sued and asked for a preliminary injunction.
The lower court had reasoned that a single colour could not be protected in fashion because of aesthetic functionality, so Louboutin appealed.
The legal question
- Can a single colour be a protectable trademark in the fashion industry?
- If it can, how far does the protection reach?
- Did YSL's all-red shoe infringe?
The court's reasoning
- The court rejected the lower court's special rule against single colours in fashion, relying on the Supreme Court decision in Qualitex (colour alone can sometimes be a trademark).
- It held that "color alone, at least sometimes, can meet the basic legal requirements for use as a trademark."
- On secondary meaning, Louboutin's large advertising and marketing spend and the strong link between red soles and the brand showed that the red outsole identified Louboutin.
- The court limited the mark to a red lacquered outsole that contrasts with the colour of the upper, and told the USPTO to limit the registration accordingly.
- On YSL's monochrome red shoe, the red sole was neither a trademark use nor confusingly similar to the contrast mark.
Result and outcome
The Second Circuit upheld the validity of the limited mark and the refusal to stop YSL's monochrome shoe. Parts of the case went back to the lower court so that YSL's counterclaims could be dealt with. Commentators described it as a win for both sides: Louboutin on validity, YSL on non-infringement.
Analysis: why this case matters
The case applies Qualitex to fashion and shows that protection for a colour can be real but narrow. The mark was defined by the contrast between sole and shoe, not by the colour alone.
The result also teaches how a registration is read: courts and the registry may cut back a broad claim to match the evidence of what consumers recognise.
Practical lessons for brand owners and inventors
- Describe a colour mark precisely (position, contrast), because broad claims may be narrowed.
- Keep advertising and sales evidence to show secondary meaning.
- Expect functionality and competition arguments in design-led industries.
- Check how each country treats colour and position marks before relying on a single registration.
Sources and further reading
FindLaw summary of the Second Circuit opinion
JD Supra: Second Circuit saves Louboutin's sole
Bloomberg Law: Both sides claim victory
This study follows law-firm and news summaries of the opinion. The full opinion should be checked for exact wording.
Questions and answers
Is the red sole a valid trademark?
Yes, but limited to a red lacquered outsole that contrasts with the shoe's upper.
Did YSL infringe?
No, its monochrome red shoe was not infringing, so the injunction was denied.
Which earlier case did the court rely on?
Qualitex v Jacobson.
Facing a similar dispute?
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