The following is a guest post by Alice Condry-Power, a former intern with the Digital Resources Division of the Law Library of Congress. She is an undergraduate student studying English at Skidmore College.
When you see a red sole on the bottom of a high-heeled shoe, where does your mind go? Many would connect this design choice to designer Christian Louboutin. Legend has it that while struggling with the finalization of an inspired shoe entitled “Flowers” in 1993, Louboutin spotted one of his employees painting her nails with red polish. He borrowed the polish and painted the sole of the shoe, and the rest was history.
Louboutin went on to trademark the red sole, but how was this possible? To understand the answer to this question, one must travel back to January 25, 1980. On this date, the Owens-Corning Fiberglass Corporation (OCF) applied to register the pink surface of their insulation as a trademark. OCF argued that section 1052(f) of the Lanham Act supported this registration. (Janet R. Hubbard, Think Pink! Color Can Be A Trademark, 43 Wash. & Lee L. Rev. 1433, 1438 (1986).) This section of the U.S. Code reads, “nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant’s goods and commerce.” OCF claimed that consumers associated pink insulation with their company and their company alone. An article by Janet R. Hubbard in the Washington and Lee Law Review explains that OCF’s argument was based on the color acquiring a “secondary meaning,” which means “the mark has lost the mark’s natural meaning and has begun to symbolize the goods of a particular supplier.” (Hubbard at 1438.)
The trademark examiner ruled that OCF could not trademark the color pink because it covered the entirety of the product and OCF appealed the decision to the Trademark Trial and Appeal Board (TTAB). However, the TTAB also denied protection, concluding that pink insulation was not distinctive and the color was merely ornamental. OCF then brought its case to the United States Court of Appeals for the Federal Circuit which ruled that OCF could register the color pink as a trademark in In re Owens-Corning Fiberglass Corp., 774 F.2d 1116 (Fed. Cir. 1985). The circuit court determined that OCF could register the mark because no other manufacturer used the color pink for its insulation and survey results demonstrated a “a syndetic relationship between the color ‘pink’ and Owens-Corning Fiberglas in the minds of a significant part of the purchasing public.” (In re Owens-Corning Fiberglass Corp. at 1127.) The 1946 Report by the Senate Committee on Patents supports this decision, which as, Janet R. Hubbard summarizes, “courts should construe the Lanham Act liberally to afford trademarks the greatest protection possible in light of the policy interests designed to promote consumer free choice and protect goodwill in quality goods.” (Hubbard at 1147.)
Because the Federal Circuit Court ruled in favor of OCF, the Lanham Act could be interpreted to allow colors to be trademarked when Louboutin attempted to register his red sole as a trademark. Although he was not covering the entire product with this red like OCF did, color was still key to the potential trademark. As mentioned previously, Louboutin first began designing shoes with a red sole in 1993, but he did not attempt to trademark the “Red Sole Mark” until the early 2000s. After two failed attempts in 2001 and 2006, Louboutin finally succeeded in 2008; the trademark was registered on January 1, 2008.
In 2012, the case of Louboutin v. Yves Saint Laurent (YSL) solidified the meaning of Louboutin’s trademark when YSL designed a monochrome red shoe with a red sole. Louboutin argued that YSL’s shoe infringed on its Red Sole Mark, but the United States Court of Appeals for the Second Circuit concluded that the mark only applied to contrasting red soles. YSL was able to produce their monochromatic shoe because the entirety of the shoe was red, but no other shoe companies are permitted by law to produce a shoe with a contrasting red sole.
- Cassidy Aranda, The Worldwide Trademark Battle Over the Iconic Red Bottom Shoe, Chicago-Kent Journal of Intellectual Property Blog, (Jan. 23, 2023), https://studentorgs.kentlaw.iit.edu/ckjip/the-worldwide-trademark-battle-over-the-iconic-red-bottom-shoe/.
- Janet R. Hubbard, Think Pink! Color Can Be A Trademark, 43 Wash. & Lee L. Rev. 1433 (1986). https://scholarlycommons.law.wlu.edu/cgi/viewcontent.cgi?article=2896&context=wlulr.
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