SEEING RED

Red Red Shoes, a photo by David Feltkamp on Flickr, used under a Creative Commons Attribution-ShareAlike license: http://creativecommons.orglicensesby-sa2.0

The Second Circuit’s March 8, 2013 decision has swank shoe designer Christian Louboutin (and likely the rest of us) seeing RED.

Back in September, the Second Circuit “kicked” out the District Court’s ruling that a single color could never serve as a trademark in the fashion industry, holding that Louboutin’s red lacquered outsole has acquired limited “secondary meaning”, but still stopped the litigious Louboutin in his tracks, issuing a Mandate providing:

“Pursuant to 15 U.S.C. § 1119 the Director of the United States Patent and Trade [sic] Office shall make appropriate entry upon that Office’s records to reflect that U.S. Trademark Registration No. 3,361,597, held by Christian Louboutin and dated January 1, 2008, is limited to a red lacquered outsole on footwear that contrasts with the color of the adjoining (“upper”) portion of the shoe.”

See September 5, 2012 Opinion HERE

In accordance with the Second Circuit’s mandate, the USPTO proposed the following amended description of the mark for U.S. Trademark Reg. No. 3,361,597:

“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 lined are not part of the mark but are intended only to show placement of the mark.”

Seeking to “heel his soles”, Christian Louboutin asked the USPTO to adopt alternative language, insisting that the Court of Appeals intended to only exclude red monochrome shoes. Mr. Louboutin proposed the following amendment:

“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 lined are not part of the mark but are intended only to show placement of the mark.”

The USPTO refused to “step on the court’s toes”, indicating that the USPTO does not have discretion to deviate from the terms of a court’s §1119 mandate.

Thereafter, Louboutin “tap, tap, tapped” his way back into court requesting that the Second Circuit modify its mandate. The court “booted” Louboutin’s request, citing authority which would require the court to recall the mandate only under “exceptional circumstances”. The court concluded that, “Louboutin has made no showing that any of the factors favor recall and modification of the mandate.”

See March 8, 2013 Opinion HERE

Redefines the term 'high heels' [009 of 365], a photo by KaiChanVong on Flickr,  used under a Creative Commons Attribution-ShareAlike license httpcreativecommons.orglicensesby-sa2.0

This doesn’t mean that the red sole is going to become “as common as an old shoe” but it does mean that we may see an influx of red-soled red shoes given that “use of red lacquer on the outsole of a red shoe of the same color is not a use” of Louboutin’s mark. It remains to be seen if Louboutin will take this “in stride” or attempt to broaden its rights to cover a red sole that contrasts with the color of “any visible portions of the shoe”.

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