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Defending the American Dream FOUNDER & PUBLISHER:   Timothy B. McCormack    CONTRIBUTORS:  Timothy McCormack  Eric Harrison  Lucas Michaels    GENERAL REQUESTS:    PUBLISHING/ADVERTISEMENTS:     

DISCLAIMER: This magazine is not intended to give legal  advice and is not a subs tute for the same; if the reader  has a concern they should contact a knowledgeable  a orney.  

Also by Timothy McCormack: 


The Copyright Cow Blog focuses on the untold stories of the second  largest export of the United States – intellectual property and tech‐ nology – through the lenses of law, economics (freaky‐economics)  and society.  Intellectual property is comic books, cartoon characters, the “Book  of Life” embodied in the Human Genome, medicine, technology,  movies, websites, and, for example, the business of producing and  distribu ng milk (a Copyright Cow favorite).  The Copyright Cow BLOG is not only for your local dairy farmer /  rancher in Washington state. It is also for the CEOs of Microso ,  Boeing and Ge y Images. Although Copyright Cow is a great read  for any business owner, it is also good for mothers and fathers,  teachers and students and anyone who wants to know more about  the legal and economic forces shaping 21st century America.  The law can decide, who lives and who dies; who eats and who  starves. Who gets the latest HIV medica on and who does not?  Who owns the cri cal intellectual property that, literally, holds the  key to life and death for over 50 million people?  What about the economic and social forces that help to shape the  law and also result in both prosperity and misfortune?  With the help of Copyright Cow, we will all be be er prepared to  answer these ques ons, shape a be er future and hopefully be a  li le happier! With your help, the reader, Copyright Cow can con‐ nue to help defend the American Dream! 

Red With Envy: Can You Trademark a Color? In case you did not know, home insulation fiberglass is not naturally pink. There is a good chance, however, that you have seen pink insulation – perhaps in your attic! Years ago Owens Corning trademarked the color pink for fiberglass insulation. The color pink has ended up being a ubiquitous product identifier for Owens Corning.

Owens Corning trademarked the color pink for fiberglass insulation

For more pictures of pink fiberglass just start looking in your neighbor’s attic or visit Owens Corning’s website at http:// Needless to say, color trademarks are well established. What happens, however, when you trademark the color red applied to the bottom of women’s shoes? That is what the famous shoemaker Christian Louboutin did! Recently the Second Circuit Court of Appeals held that applying color to the soles of a shoe can lead to a valid trade mark. The case, Christian Louboutin S.A. v. Yves Saint Laurent AM Holding, Inc. has interesting precedence for business owners interested in protecting their business’s marks.

Background French shoemaker Christian Louboutin began painting the soles of women’s high-heeled shoes back in 1992. As any fashionable woman knows, the famous “China Red” colored soles made the shoes instantly recognizable as Louboutin shoes. Women were red with envy every time they saw one of those red soles in the street! As a result, four years ago, Louboutin was awarded a trademark by the U.S. Patent and Trademark Office.

Image of U.S. Trademark Registration Number 3,361,597

A competitor, Yves Saint Laurent, recently sought to introduce a “monochrome” line of women’s designer shoes that included red soles. In essence, Yves Saint Laurent had a shoe that was all red because it had both red soles and red uppers. Louboutin sued to prevent Yves Saint Laurent from selling red shoes, claiming that its red-soled shoes were protected by trademark. The district court sided with Saint Laurent saying that the all red shoes could be sold! Louboutin appealed.

District Court: Color Marks Not Possible for the Fashion Industry

soles. Since Yves Saint Laurent’s shoe and sole design was monochromatic it was not infringing of Louboutin’s contrasting red sole trademark.

This past summer, the federal judge in New York rejected Louboutin’s request for a preliminary injunction, noting that the designer would probably lose its trademark claim against Yves Saint Laurent. The district court held that because color serves both an ornamental and aesthetic purpose in the fashion industry, color could not operate as a protectable trademark in the fashion industry. Louboutin appealed the district court’s ruling.

Where Intellectual Property Meets Business

Court of Appeals: Color Marks Possible for the Fashion Industry On September 5, 2012, the Court of Appeals rejected the district court’s per se color exclusion rule for the fashion industry holding that color marks in the fashion industry are eligible for trademark protection. The Second Circuit stated that color marks are never inherently distinctive and must acquire secondary meaning to claim valid trademark protection. Looking to Louboutin’s advertising expenditures, media coverage, and sales success, the Court determined that the Red Sole Mark had gained secondary meaning. This came as a boon to Louboutin as it validated their trademark in the red sole. However, the Court still had troubling news for Louboutin.

Problem for Louboutin – Monochromatic Coloring Not Covered The Court stated Louboutin had a fundamental problem with its trademark infringement case, specifically that the upper color of Louboutin’s high heels always contrasted with the red colored sole of the high heal. In other words, the red heel did not match the black leather or other colored upper on the same shoe, unlike Saint Laurent’s shoe that had a red upper and a red sole. The Court found that Louboutin failed to demonstrate that the secondary meaning of their red sole mark had also extended to monochromatic shoes and

The Wizard Of Oz – Amicus Brief An amicus brief, meaning “friend of the court,” is sometimes filed in important cases by companies that are not parties to the litigation but have some interest in the outcome. Given the fight here of red shoes it is not hard to imagine The Wizard of Oz filing an amicus brief in this case. Having recently seen the musical Wicked, one wonders if the ruby red slippers from The Wizard of Oz and Wicked also had red soles? Although the appeals court did not mention the iconic Hollywood shoes, if the decision was different one can imagine a world where Dorothy’s slippers might have been blue or orange based on a pre-production cease and desist letter! I guess next time you see Dorothy skip down the Yellow Brick Road, you’ll have to check out the soles of her shoes to find out! ■

This case highlights the unique use of color identifiers for enhancing brand identity, but the lesson is not limited to companies in the fashion industry. Trademarking is a tool that can help all businesses secure protection against imitators. There are certain limiting factors related to color identifiers that Seattle businesses should recognize: (i) color marks require secondary meaning; and (ii) some courts recognize an aesthetic functionality doctrine that may limit the protection that a color mark can offer in certain industries, such as the fashion industry. This being said, unique color identifiers for brand identity can be used by tech companies and manufacturing companies to further establish their brands. In the end, building a brand’s awareness in a customer’s mind may be as important as having a great product to sell. Of course, a good product is essential to creating a solid brand.

A B O U T C O P Y R I G H T C O W ™ Copyright Cow™ is the Blog and alter-ego-Blogger name for Timothy B. McCormack, attorney at law, a well established and successful Seattle-based intellectual property, technology and business lawyer. You can also follow Copyright Cow on Facebook . . Learn more about attorney Timothy B. McCormack. Look for us on Facebook and Google +, McCormack Legal Blog You Tube and Twitter!


We provide strategic planning, patent and trademark portfolio management / development, domestic and international technology licensing, patent position competitive analysis, technology and collaboration agreements, technology audits, due diligence studies, cease and desist letters, and invalidity / noninfringement opinions. We represent individual inventors, artists, emerging technology companies, and mature multinational corporations in matters relating to the procurement and enforcement of domestic and foreign intellectual property rights.

We recognize that each of our clients' needs are unique. This, we adhere to an individualized approach whereby the needs of each client are addressed in accordance with their particular business objectives.

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The Copyright Cow: Volume 1 Issue 6  
The Copyright Cow: Volume 1 Issue 6