Jacobson Products Co. V. Ysl Case Study

acts: Christian Louboutin, S.A. a renowned French designer of high-fashion footwear and accessories, appealed a decision from the U.S. District Court for the Southern District of New York denying its motion to preliminarily enjoin Yves Saint Laurent America Holding, Inc. (“YSL”), a venerated French fashion institution, from selling red shoes with red soles as one color in a monochromatic-colored shoe collection launched in 2011. Initially, Louboutin brought its action against YSL by asserting claims under the Lanham Act for trademark infringement and counterfeiting, false designation of origin, unfair competition, and trademark dilution based on its federal registration for the color red for lacquered soles on footwear. This is also referred

The court cited Qualitex Co. v. Jacobson Products Co., a case where the Supreme Court forbade the implementation of a per se rule that would deny protection for the use of a single color as a trademark in a particularly industrial context. The court also reviewed whether the Red Sole Mark merited protection as a distinctive mark that had acquired secondary meaning. The District Court noted that since Louboutin had registered the Red Sole Mark with the Patent and Trademark Office this gave rise to a statutory presumption that the mark was valid. The appeals court found in effect that YSL had rebutted the presumption by showing that a single color can never achieve a trademark protection in the fashion industry. Louboutin also failed to show the appeals court that that the secondary meaning of its Red Sole Mark extended to uses in which the sole did not contrast with the upper part of a shoe.
Conclusion: Based on evidence referenced above, the appeals court ordered the Patent and Trademark Office to limit Louboutin’s Red Sole Mark to only those situations in which the red lacquered outsole contrasts in color with the adjoining upper part of the shoe, finding that the Red Sole Mark was valid and enforceable only as