The Supreme Court has explained that a single color may meet the requirements for trademark protection under the Lanham Act. Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995). In Qualitex, the color at issue was a greenish-gold used by the plaintiff to identify the press pads it sold to dry cleaners. As the Supreme Court explained, "[w]e cannot find in the basic objectives of trademark law any obvious theoretical objection to the use of color alone as a trademark, where that color has attained 'secondary meaning' and therefore identifies and distinguishes a particular brand (and thus indicates its 'source')." Id. at 163. The Supreme Court therefore found that a single color could be trademark protected if it "act[s] as a symbol that distinguishes a firm's goods and identifies their source, without serving any other significant function." Id. at 166. Although the Court found no theoretical objection to trademark protection of color, it left open the door to case by case practical objections to trademark protection of color.
The question of whether a single color could be trademark protected arose again in 2012, in a closely followed case about shoes (expensive ones). Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc., 696 F.3d 206 (2d Cir. 2012). At issue in that case was whether the plaintiff's registered trademark, consisting of a red lacquered sole on women's high heeled shoes, was a valid and protectable trademark under the Lanham Act. As the Southern District of New York explained, "in fashion markets color serves not solely to identify sponsorship or source, but is used in designs primarily to advance expressive, ornamental and aesthetic purposes." Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc., 778 F. Supp. 2d 445, 451 (S.D.N.Y. 2011). The Southern District found that the plaintiff's use of a red sole on its shoes could not be trademark protected because it was functional in the context of the fashion world, where (as Mr. Louboutin, himself, admitted) it was used to evoke feelings of "flirtatious[ness]" and "sex[iness], and to "attract[] men to the women who wear [Louboutin] shoes." Id. at 453. The color red has been characterized as evoking similar psychological responses outside of Mr. Louboutin's admissions. See John Williams, Your Brand's True Colors (March 7, 2007) (available at http://www.entrepreneur.com/article/175428) ("Red activates your pituitary gland, increasing your heart rate and causing you to breathe more rapidly. This visceral response makes red aggressive, energetic, provocative and attention-grabbing."). In the high stakes world of women's fashion, it would seem indisputable that a "sexy" and "attention-grabbing" product will sell. In turn, it would seem that the use of the color red in women's fashion would serve a useful aesthetic function.
The Second Circuit did not believe that was the case, though. It acknowledged that the "ultimate test of aesthetic functionality . . . is whether the recognition of trademark rights [in an aesthetic design feature] would significantly hinder competition." Id. at 221 (quoting Qualitex, 514 U.S. at 170) (alteration in original). Where aesthetic functionality is raised as a defense to trademark infringement, the Second Circuit explained, "courts must 'inquire' as to whether recognizing the trademark 'would put competitors at a significant non-reputation-related disadvantage.'" Id. (quoting TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 32-33 (2001)). As the Second Circuit summarized it, "a mark is aesthetically functional, and therefore ineligible for protection under the Lanham Act, where protection of the mark significantly undermines competitors' ability to compete in the relevant market." Id. at 222. The court also cautioned that, "[b]ecause aesthetic function and branding success can sometimes be difficult to distinguish, the aesthetic functionality analysis is highly fact-specific." Id.
Despite outlining in great detail the aesthetic functionality doctrine, the Second Circuit never reached the issue on the merits. The court instead determined that the plaintiff's trademark protection should be limited in a manner that would result in a finding of no infringement (and thus no need to perform the aesthetic functionality analysis). In other words, the Second Circuit found that the plaintiff's trademark protection could extend only to its use of red soles on shoes with contrasting uppers (for example, black or white high heels with red soles). Id. at 225. The defendant's accused products, on the other hand, were monochromatic--that is, their red soles matched their red uppers, and therefore could not be found to infringe the plaintiff's trademark as limited by the Second Circuit. Id.
In so ruling, the Second Circuit avoided deciding more difficult issues. For example, the court did not need to decide whether, in the high end women's fashion industry where hundreds and even thousands of dollars may be spent on a single pair of shoes, there could really be any legitimate risk of consumer confusion based on a given designer's use of a color. The court also avoided making a determination of the relevant market, which presumably would have included arguments relating to price point and other fact intensive issues. Most importantly, the court avoided deciding whether the use of red soles, in this particular market and in the context of high end fashion, should be considered aesthetically functional since the color red (as Mr. Louboutin admitted) uniquely evokes certain psychological responses that would seem to drive consumer demand beyond any correlation consumers might draw between the color red and the Louboutin brand. In other words, by limiting the scope of Louboutin's trademark protection so that the defendant could not be found to infringe, the Second Circuit avoided ruling that Louboutin could be, forever, the only shoe maker that could legally sell black or white high heels which, when viewed from behind, appear "flirtatious," "sexy," and "attention-grabbing" as a result of bright red soles. Had the Second Circuit so ruled, any woman who wished to purchase such a pair of high heels, with red soles which Mr. Louboutin characterized as "sexy" and "attract[ing] men to the women who wear my shoes," would have as her only option purchasing shoes that cost hundreds or even thousands of dollars. Such a ruling would seem inconsistent with trademark law's goal of preserving a "vigorously competitive market for the benefit of consumers." See id. at 216 (internal quotation marks omitted).
