105 Trademark Rep. 1337 (2015)
Why Louboutin Matters: What Red Soles Teach Us about the Strategy of Trade Dress Protection

handle is hein.journals/thetmr105 and id is 1379 raw text is: 


Vol. 105 TMR


            WHY LOUBOUTIN MATTERS:
    WHAT RED SOLES TEACH US ABOUT THE
    STRATEGY OF TRADE DRESS PROTECTION

    By Anne H. Hocking* and Anne Desmousseauxtt

           I. INTRODUCTION AND SUMMARY
    This article is co-written by American    and French-
European counsel. The authors will explore the protection
offered by trademark law in these respective jurisdictions for
Louboutin's trademark in red soles for women's footwear. The
paper will first analyze the U.S. registration strategy, how the
trademark was enforced, and the reasons behind the U.S.
court's decision. It will then explore the results of the mark's
registration in France and the European Union, and the result
of enforcement actions between the parties in France and the
Benelux countries (in their aggregate, Benelux). The paper
will also discuss the Second Board of Appeal Office for
Harmonization in the Internal Market (OHIM) decision and
how the OHIM opinion does or does not inform decisions in
specific E.U. jurisdictions, namely France and Benelux.
    In the view of the authors, the registrant brought upon
itself both  the  rulings  against  infringement  and  the
invalidation of its mark as filed in certain formats. This is not,
in the authors' view, because of the invalidity of the color red
on the under sole of women's shoes, but rather, with respect to
those cases that had outcomes against Louboutin, because of
the choice of defendant and weakness of the underlying
infringement   claims.  Moreover,  Louboutin   adopted   a
registration strategy that did not seek to protect the mark as
used with the mark as applied for in certain applications.
    Thus, the Louboutin cases should not be read as findings
against the protectability of color as a mark, but rather as
cautionary tales in how to register, and how not to protect, such
rights.
    The authors hope that this paper will provide a practical
guideline to achieving design- and color-based registrations, a
theoretical understanding of some of the underlying principles
of protection for color marks, and strategies for enforcing such
rights in the United States and Europe.

   * Partner, Donahue Fitzgerald, San Francisco, California, Associate Member,
International Trademark Association.
   ** Partner, ADminister, Paris, France, Associate Member, International
Trademark Association.


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