IP: Recent developments in color trademark registration

The central question in modern disputes over the validity of color trademarks is whether the color is functional.

What can brown do for you?

A color can do quite a bit when it comes to embodying an organization’s good will, as evidenced by the color employed for nearly a century by UPS’s ubiquitous delivery trucks. According to the vice president for brand management and customer communications at the time of this only recently retired slogan’s launch, “brown is more than a color—it’s a tangible asset that people associate with all the things that are good about our brand. 

The District Court for the Southern District of New York declined to enjoin YSL from selling its red shoes. Further, it declared Louboutin’s trademark, and any color trademark in the context of fashion, to be invalid. On appeal, the Second Circuit affirmed the decision not to enjoin YSL, but overruled the District Court’s holding that a single color can never serve as a trademark in the fashion industry.

The 2nd Circuit drew a distinction between Louboutin’s use of red soles that stand in contrast to the shoe’s “upper” and YSL’s use of red soles in a monochromatic shoe. The red sole, according to the 2nd Circuit, has secondary meaning only as far as it contrasts with the rest of the shoe, causing the sole to “pop” and thereby distinguish its creator.  Importantly, Louboutin’s placement of the color in an unusual context was a deliberate attempt to tie the color to his product—the case does not stand for protection of any use of color merely because it “pops.”

Contributing Author

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David J. Kappos

David J. Kappos is a partner at Cravath, Swaine & Moore LLP. He is widely recognized as one of the world's foremost leaders in the...

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