In a previous blog, Beware Using Historic Symbol as Trademark, we discussed branding considerations applied to use of well-known symbols such as the Texas Star in your logo for goods and services. As the palette of colors is limited and even subjective by nature, there is even less opportunity to claim a trademark for a particular color. However, there is no prohibition per se against a color serving as a mark. In fact, the U.S. Supreme Court stated in Qualitex, a case involving a claim for trade dress protection of the green-gold color of a dry cleaning press pad, that “it is difficult to find, in basic trademark objectives, a reason to disqualify absolutely the use of a color as a mark.” And the Court of Appeals Federal Circuit in Owens-Corning determined that a fiberglass manufacturer could trademark the pink color of its residential insulation material, ruling that if a color is distinctive and capable of serving as an identifying source of the trademark applicant’s goods in commerce, then it is capable of being trademarked. Unlike the industrial cases cited above, one might argue that claiming a color as a mark in the fashion industry touches on the functionality that trademark law prohibits. Changing color schemes year to year have always been the way of high fashion and therefore an aesthetic functionality existed prohibiting this type of mark. Therefore, the case of Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc. “YSL“ recently decided by the Court of Appeals Second Circuit offers certain guidance with respect to trademarking a color. The Plaintiff Louboutin had registered in 2008 a trademark for a lacquered red outsole on high fashion footwear. Louboutin had been using this mark since the 1990’s and the mark had developed secondary meaning as a source identifier, meaning that the high fashion consumer could determine from the red sole that the shoe was made by Louboutin. Defendant YSL subsequently designed an all red high fashion shoe to compete with Louboutin in this market. Louboutin filed a suit for trademark infringement and sought an injunction against YSL. The District Court ruled in favor of YSL because in their view a single color in the fashion industry could not be protected under trademark law. It therefore declined to enter a preliminary injunction to restrain YSL’s alleged use of the mark. On appeal, the Second Circuit reversed in part upholding Louboutin’s trademark. The Court found the contrasting red outsole in the shoe provided the distinctive nature of the mark. Therefore, color can constitute a valid mark in the fashion industry provided it is distinctive and serves to identify the source of such goods in commerce. However, the Court still held that the all red YSL shoe did not infringe Louboutin’s trademark. Why not? Well trademark law is premised on protecting consumer choice. Trademark infringement is based on likelihood of confusion as to the source of goods or services. When comparing the shoes the Court determined that there was a significant difference one being all red versus the other having a contrasting red sole. The Order denying the injunction was upheld, so although the Louboutin trademark is valid, YSL can continue marketing its shoe.