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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. 1337

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