The sage continues, but this time the brawl between the two high-end fashion titans takes place in the United States Patent and Trademark Office. Back in September of 2012, the Second Circuit issued an important fact specific ruling in regards to Christian Louboutin‘s trademark covering the red sole of their shoe in that protection will remain only when the red outsole is contrasted with the “upper” of the shoe. The opinion stems from the affirmation of the district court’s denial of Louboutin’s motion for preliminary injunction against Yves Saint Laurent (YSL). The Second Circuit specifically found that “it is the contrast between the sole and upper that causes the sole to ‘pop’, and to distinguish [Louboutin as] its creator.” So what follows is that Louboutin may have limited or no rights in the red sole by itself or when the sole and upper do not contrast.
Now Louboutin’s trademark U.S. Reg. 3,361,597 for the trade dress below is in a tug-of -war between the parties as to what the modified description of the mark should be following the Court’s Mandate to the USPTO to clarify the description consistent with the Court’s decision.
Following the Second Circuit’s ruling, the USPTO proposed the following “…The mark consists of a lacquered red outsole on footwear that contrasts with the color of the adjoining remaining portion of the shoe (known as the ‘upper’).” Louboutin shot back with what YSL argues is a dramatically “broaden scope of Louboutin’s rights.” Namely, Louboutin requests that the “mark consists of a lacquered red outsole on footwear that contrasts with the color of any visible portion of the shoe.” YSL’s main contention is with Louboutin’s deletion of the term “upper” which is replaced by “any visible portion of the shoe”. Slight difference? Maybe, but trademark law is all about the nuances, and this nuance YSL argues, will have a serious anti-competitive effect. The parties have been duking out this point during the beginning of February with no end in site as of yet.