Reuters recently reported that Christian Louboutin is suing Yves Saint Laurent for using red soles on their shoes. Christian Louboutin trademarked the red soles mark in the US in 2008 and alleges that the defendants’ use of red outsoles on the shoes is virtually identical and likely “to cause and is causing confusion, mistake, and deception among the relevant purchasing public.” According to New York Magazine, Yves Saint Laurent’s spring 2011 collection features shoes in a variety of colors with each colored shoe having a matching colored sole. The collection includes a pair of red suede shoes with red soles, as well as purple, navy, and green shoes with their matching color sole. Louboutin is clearly saying that no other company can create a shoe with red soles.

The advantage of Louboutin owning a federal trademark registration is that the registration creates a presumption of ownership over the specific mark and gives Louboutin the exclusive right to use that mark “nationwide on or in connection with the goods/services listed in the registration.” Therefore, Louboutin can stop others from using the “red soles” trademark or a confusingly similar mark, if the mark is being used on competing goods or services, and if consumers are likely to be confused by this use.

Color in a trademark is rarely protected.  It is only protected under certain circumstances as courts are concerned with the “color depletion theory”- Since there are only a limited number of colors in the universe, to permit one or a few people to use colors as trademarks would deplete the amount of useable colors. Eventually, it would create an advantage to some competitors and a disadvantage to others. In Qualitex Co. v. Jacobsen Products Inc., 514 U.S. 159 (1995), the Supreme Court held that a color by itself could meet the legal trademark requirements if it had a source-distinguishing ability of a mark. Here, Louboutin has clearly linked in the public’s mind that footwear with red soles indicate Louboutins.

Assuming that Louboutin’s trademark is valid, Louboutin would have to show that Yves Saint Laurent’s red sole shoe is or is likely to cause consumer confusion and deception among consumers. There are many factors to consider..

It’s quite possible that initially a consumer could confuse the YSL shoe for a Louboutin if the shoe is displayed on its own, opposed from being displayed with its collection. However, both designers have different styles. YSL shoes are quite distinctive from Louboutins, most notably in the shape and contour of the sole and heel of their shoes.In addition, YSL is not trying to sell its product as a Louboutin. Each consumer will know, when viewing the logo on the shoe, whether they are holding a YSL or Louboutin shoe. If anything, the best argument is dilution. YSL’s use of the red sole may dilute Louboutin’s trademark, weakening its reputation for quality and eventually making it common to see shoes with red soles. Louboutin has a mark which is distinctive and recognizable, and if YSL is permitted to create shoes with red soles, then other shoe companies will be permitted as well. If such is permitted, then eventually a consumer will not instantly think of a Louboutin when they see a shoe with a red sole. One can also sympathize with YSL, as it seems unfair that one company can “own” the color of a sole. Here, YSL is probably not trying to ride off of Louboutin’s reputation or style, but using the color because its part of its own creative design and collection. May YSL win on a fair use argument? Stay tuned.

This is not the first time that companies produce and sell shoes with red soles. YSL produced a shoe with red soles last year and quite a few boutiques in downtown Manhattan carry similar products. In addition, while I was in Argentina four months ago and shopping endlessly for shoes, I was shocked at the amount of footwear that contained red-soles. Out of 15 stores that I visited, at least 10 of them sold shoes with red soles, and some of these boutiques ONLY sold shoes with red-soles. I would see one amazing shoe after another, to only have to walk away because I wouldn’t dare purchase them. While a U.S. federal trademark registration protects your mark in the U.S, protection does not extend elsewhere. In order to achieve national protection, a company has to file a trademark application directly with the particular country they wish to register in. So, if Louboutin has only acquired trademark protection in the UK and the US, then designers anywhere else in the world can produce shoes with red soles legally. If consumers started purchasing these shoes from abroad, such as in Argentina, and began wearing them on the streets of NY, it would have a similar effect to consumers purchasing and wearing the YSL red-soled shoes. Both products would dilute the Louboutin mark, however, only the YSL shoe may be prevented from selling its product.