According to the Complaint, Louboutin came up with his signature red sole nearly 20 years ago, when he painted red nail polish on the black soles of a pair of women's shoes. In 2008, the United States Patent and Trademark Office granted Louboutin a federal trademark registration for the red soles. Louboutin's high-end signature red soles, which cost upward of $795, are worn by many celebrities and were often seen adorning the feet of the ladies of "Sex and the City." According to Louboutin’s lawyer, the red soles are “ the lifeblood of the company.”
Judge Marrero recognized the impact of Louboutin’s red soles in the fashion industry stating that “When Hollywood starlets cross red carpets and high-fashion models strut down runways, and heads turn and eyes drop to the celebrities’ feet, lacquered red outsoles on high-heeled black shoes flaunt a glamorous statement that pops out all at once. . . . For those in the know, cognitive bulbs instantly flash to associate: ‘Louboutin.’ ”
However, Judge Marrero ultimately denied the request for preliminary injunction and ruled that: 'Because in the fashion industry colour serves ornamental and aesthetic functions vital to robust competition, the court finds that Louboutin is unlikely to be able to prove that its red outsole brand is entitled to trademark protection, even if it has gained enough public recognition in the market to have acquired secondary meaning.”
Judge Marrero's ruling denying the preliminary injunction did not stop there. He ordered the parties back to court next week so he can hear arguments why Louboutin's trademark registration should not be cancelled.
Although Burberry’s plaid and Tiffany’s blue are protectable trademarks, this ruling calls into question whether a designer can own exclusive rights to a color and whether color can operate as a source identifier.