In the US, color alone may be protectable as a trademark when it identifies and distinguishes a particular brand. This type of color, trademark protection is most common with industrial goods like fiberglass insulation that must conform to strict regulatory standards. For example, ‘pink’ fiberglass is a trademark of Owens Corning.
FASHION, however, is another world entirely and the high-end shoe designer, Louboutin, was recently denied a monopoly over the color RED used on the soles of designer footwear. Even though Louboutin was granted a US trademark registration for red soled shoes in 2008, a Manhattan judge recently held that Louboutin could not prevent Yves Saint Lauren (and other designers) from designing and selling red-soled shoes. The judge also stated that Louboutin’s ‘Red Sole’ trademark registration was likely to be cancelled. (This holding is likely to be challenged, appealed… and possibly overturned).
Wouldn’t it be strange to think of only one designer or fashion house owning an exclusive right to use a particular color? The court thought so and held the fashion industry is a highly creative industry dependent on access to the full spectrum of colors.
(Interestingly, the judge did create a distinction between Louboutin’s Red Sole mark and other fashion color marks like the Burberry Plaid because the plaid is an arrangement of different colors and not a specific, single color.)
Enjoy this new freedom to paint your soles red.
BY: Vanessa Kaster, Esq., LL.M.
For more information: NY Law Journal: http://www.law.com/jsp/nylj/PubArticleNY.jsp?id=1202510810474 and Judge Marrero’s 8/10/11 Decision: http://www.nylj.com/nylawyer/adgifs/decisions/081111marrero.pdf. Red Sole USPTO Registration # 3361597. @iplegalfreebies and www.kasterlegal.com.
An adult entertainment domain .xxx (instead of .com / .net / .gov) has been given the green light (or red light, rather) to launch later this year. Evidently, the domain will promote ‘responsible business practices’ within the universe of on-line, adult entertainment. The launch of .xxx has been received with mixed levels of support both from within the adult entertainment industry and without.
As .xxx primes itself to shimmy into existence, trademark owners are playing defense. Obviously, there is concern that the launch of the .xxx domain will put trademark owners at risk of having their REGISTERED TRADEMARKS incorporated into unauthorized .xxx domains that divert traffic to porn sites. This will impact all types of businesses, municipalities, non-for-profit organizations, educational institutions and blogs who own registered trademarks. For example, TOYS R US which is a famous, children’s brand would take on a wildly different dimension if attached to an .xxx domain. Not only would an unauthorized .xxx domain potentially tarnish the reputation of the brand but it could also divert internet traffic if it is not safeguarded against.
To minimize this risk, a defensive registration system has been set up for registered trademark owners to BLOCK the use of their marks in .xxx extension domains. The defensive registration system is called SUNRISE B and it opens September 7, 2011 and closes October 27, 2011. The initial registration fee with SUNRISE B is free, open to owners of registered trademarks (registered by 9/1/11), and will involve a verification process for approval. (Fees are anticipated to complete the defensive registration process.)
For more info –> http://www.icmregistry.com. Paid pre-registration is also available through several providers.
BY: Vanessa Kaster, Esq., LL.M.