French shoemaker Christian Louboutin stood before the 2nd Circuit Court of Appeals last Tuesday to present arguments as to why it should retain the exclusive rights to use the color red, specifically “China Red,” to cover the bottoms of its high-heeled shoes.
The dispute first gained a foot-hold in media circles last year when Louboutin sued the French fashion house Yves Saint Laurent for infringement of its trademark design by also producing a line of red-soled shoes similar to Louboutin’s designs. Unfortunately for Louboutin, a lower court in Manhattan decided against Louboutin’s claim of trademark rights in the red soles.
However, undeterred by the agony of defeat, Louboutin appealed the ruling to the 2nd Circuit where the case now awaits a final determination.
In this context, many are now asking can a color be protected as a trademark? Can the design of a bottom of a shoe be protected against infringement?
The answer, absolutely.
Color Trademarks, as they are referred to, are just one of the lesser-known forms of protection which may be used to protect one’s intellectual property under current trademark laws.
There is perhaps no better example of this in recent times then UPS’s attempts to register the color brown in connection with shipping services. In the early 2000s UPS determined that it wanted to lock up the color brown. The U.S. Patent and Trademark Office initially denied their efforts.
Ultimately, it was held that a business can protect a conventional, familiar color as a trademark, but only if it can show substantial evidence of acquired distinctiveness in the color as a trademark. In other words, when consumers see a specific color do they think of your goods or services? That’s why for years UPS has run the ad campaign “What Can Brown do for you?” They are ingraining in the minds of the consumer that when they see the color brown they think about UPS’s shipping services.
So can you protect a color? Definitely. But in order to show the acquired distinctiveness or recognition required to garner a federal registration you have to show consumer recognition of your color with your product. In the end, that will cost you a lot of green.
Trade dress is another form of trademark protection with which many are unfamiliar. Trade dress is a type of trademark that generally protects characteristics of the visual appearance of a product, its packaging, or even the overall look and feel of a business so long as it signifies the source of the product to consumers.
What can be considered trade dress you might ask? Well, let’s look at some examples:
The design of product packaging can be registered as a trademark provided that the packaging identifies the source of the product and is not attempting to be registered to protect some functional element of the packaging (that would be a patent). The best example of this we know of is the shape of the iconic Coca Cola bottle. Everyone recognizes the hour-glass looking design as containing that little slice of heaven from those folks from Atlanta. It is so recognizable that Coca Cola recently began an effort to convert the packaging of their traditional 2 liter bottles to the hour-glass design. Consequently, when you see the design of the traditional Coca Cola bottle and you recognize it as the bottle in which Coca Cola provides its product, that is the perfect example of packaging which functions as trade dress.
Color schemes of restaurants as well as similar features of businesses can also be protected as trade dress under U.S. Trademark Laws. For instance, let’s say you have been operating a uniquely designed or themed restaurant or business for some time and then begin to franchise the same, the color scheme and other elements of your business may be protectable as trade dress.
For example, on the East Coast we have a restaurant franchise that is expanding rapidly called Five Guys. Five Guys offers great burgers and fries. For our purposes today, however, it is important to know that no matter how the restaurants appear on the outside they all have one common theme on inside: red and white checkerboard tile walls. When you walk into the restaurant, even if you did not see the sign on the front of the building telling you that you are in a Five Guys, you know that those red and white checkerboard tiles mean that you are about to have a bacon double cheeseburger with a side of twice-fried french fries like no other. You know you are in a Five Guys. If you know this simply by looking at the color scheme on the walls, this perfectly demonstrates the fundamental point of trade dress protection.
Additionally, drawing upon the above, one of my favorite forms of trade dress protection is the overall appearance of a trademark used in connection with a product or service that also can be protected. This is where trade dress gets a little broad and often difficult to digest. Nevertheless, for our purposes we’ve already discussed color schemes and package designs. The law has also been used to extend to generally recognized images and manners of presentation as well. We think the ongoing story of the Naked Cowboy best illustrates this concept.
For any of you who have been to New York City in the past decade or so there is symbol of America right in Times Square that cannot be missed. The ball that drops every year at the stroke of midnight you may ask? No. The giant billboards and flashing neon and LED screens 30 stories high? Guess again. We are talking about Robert John Burck, aka—the Naked Cowboy.
Since 1997, the chiseled and tanned Naked Cowboy has strolled through Times Square wearing nothing but a pair of white briefs, white boots, matching cowboy hat, guitar and a smile. He sings for tourists and poses for their photographs. Like the U.S. Postal Services’ age-old motto neither rain nor sleet nor dark of night can stop the Naked Cowboy. You can catch him strolling through Times Square during the dog days of summer to the coldest days of winter—all still in his iconic skimpy manner of dress.
A few years back, Mars, the owners of the M&M brand of candies, opened M&M World in Times Square. As the popularity of the Naked Cowboy grew Mars thought it would be a great marketing ploy to parody the Naked Cowboy with a Times Square billboard of one of their M&M characters dressed in white briefs, white boots, the white cowboy hat and white guitar. Well the Naked Cowboy wasn’t down with that tune. He sued. And guess what? He won (or at least won a settlement). In short, his lawyers argued and convinced Mars that the Naked Cowboy’s overall likeness and image was protectable. Accordingly, by posting the billboard, Mars was infringing upon the Naked Cowboy’s trademark—and trade dress—rights.
So as the Naked Cowboy teaches us even the overall appearance of a performer or otherwise can be protected as trade dress if that overall appearance has sufficient recognition value.
Lastly did you know you can protect sounds as trademarks? It’s true. The rumble of a Harley Davidson. The “Bum ….. bum bum bum bum” of Intel. Even the bell tone sound of a plane that Southwest Airlines uses in its commercials. These can all be protected as trademarks provided, as above, the trademark holder can show that in the minds—and in this case ears—of the consuming public, when they hear that specific sound they think of the specific company’s goods or services.
In summary, why do these matter? In protecting your brand identity people are often constrained to thinking about protectable trademarks as being merely a slogan, a logo, or a company’s name. As we see above, a trademark registration can extend to protect a whole host of other things that consumers use to identify the source of a product or service.
So can Louboutin prevail and thus secure an exclusive right to manufacture red-soled high-heel shoes? Yes. Will they? To be continued…