Marco Risi
Professor Twomey
April 26th, 2022
BSLW1021
Trademark Law in the Fashion Industry
Footwear and apparel play a dominant role in the lives of individuals in today’s day and
age: from shoes to coats to accessories, they make up an important aspect of personal life as well
as the economy of countries worldwide. As of 2019, global retail sales of apparel and footwear
reached 1.9 trillion dollars and are expected to grow to above 3 trillion dollars by 20301. The rise
of Covid-19 has brought about destructive repercussions for fashion companies and their
employees: according to McKinsey, about 7 percent of companies left the market entirely, either
due to financial distress or because they were bought by rivals2. Nevertheless, with borders reopening again and consumer confidence increasing, the apparel industry is set to keep steadily
increasing, especially due to emerging markets within the Asia-Pacific and European regions3. But
what is this rapid increase caused by and why has the fashion industry become such a dominant
part of nation’s labor force and GDP? Although the reasons are multiple, technology is at the
forefront of this development. With cheaper resources, innovative methods of producing goods
and lower barriers to entry into the industry, this is impacting where and how consumers are
discovering brands and shopping the category, through to purchase, transaction, and commerce4.
1
P Smith. “Topic: Apparel Market in the U.S.” Statista. Accessed May 3, 2022. https://www.statista.com/topics/965/apparel-market-in-the-us/.
2
What Tech Innovation Means for the Business of Fashion.” McKinsey & Company. McKinsey & Company, December 2, 2021.
https://www.mckinsey.com/industries/technology-media-and-telecommunications/our-insights/what-tech-innovation-means-for-the-business-of-fashion.
3
P Smith. “Topic: Apparel Market in the U.S.” Statista. Accessed May 3, 2022. https://www.statista.com/topics/965/apparel-market-in-the-us/.
4
“State of Fashion 2022: An Uneven Recovery and New Frontiers.” McKinsey & Company. McKinsey & Company, March 31,
2022.
Greater consumer interaction with business coupled with strategic use of technologies such as
RFID (Radio Frequency Identification) by global giants such as Zara, has cultivated an
environment where companies look to find any method possible in order to create biggest margin
of profit for a specific good. In other words, such an environment can be described as “Red Ocean
Strategy” where companies look to enter existing markets to capture demand, beat the competition
and gain as much of the market share as possible5. Resultingly, this environmental pressure
cultivated and pursued by companies in the past decades has caused several conflicts with
trademarks, as evidenced by the famous case Christian Louboutin S.A (CL) v Yves Saint Laurent
America Inc. (YSL) which will be discussed in a later part.
Before analyzing this specific case, however, it is important to understand and give a
background regarding trademark law. A trademark is defined as any symbol, device, or
combination of these used to identify a product or service6. The owner of a mark may obtain
protection from other using it by registering the mark in accordance with federal law at the United
States Patent and Trademark Office (USPTO) in Washington Dc7. Furthermore, the right to protect
an individual’s intellectual property is defined under the Lanham Act, in which a producer is
granted the exclusive rights to register a trademark and prevent competitors from using that
trademark. In addition, under the Madrid Protocol, there exists a system for a streamlined system
of international registration of trademarks8. Continuing, trademark law categorizes marks along a
spectrum of distinctiveness: coined or fanciful (most distinctive), arbitrary, suggestive, descriptive
or generic9. Most importantly, when a descriptive mark, such as the now famous SPORTS
5
“Red Ocean Strategy vs Blue Ocean Strategy,” Blue Ocean Strategy, January 21, 2022, https://www.blueoceanstrategy.com/tools/red-ocean-vs-blue-ocean-strategy/.
6
David P. Twomey, Marianne Jennings, and Stephanie M. Greene, Business Law: Principles for Today's Commercial Environment (Boston, MA: Cengage Learning,
2017).
7
8
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ILLUSTRATED, becomes associated with a single commercial source, the mark is said to possess
“acquired distinctiveness” or “secondary meaning.” To conclude, trademarks serve as a way for
individuals to protect their own property: whether it is a symbol or device, it guarantees that the
intellectual possessions maintain under the control of its original inventors, not copycats or
followers.
The case of CL v YSL clearly conveys the conflicts that can arise in trademarks within the
fashion business. CL is a French luxury company that specializes and is known for its footwear.
Specifically, CL shoes are recognizable by their red soles, a symbol that conveys wealth and power
in the world of luxury. When in 2011 YSL released their collection of monochrome shoes,
including a shoe with fully red upper, sole and heel, CL filed suit under their Red Sole Mark which
was approved in 2008 for woman’s high fashion red soles.10 More specifically, they filed under
the Lanham Act for (1) trademark infringement and counterfeiting, (2) false designation of origin
and unfair competition and (3) trademark dilution, as well as state law claims for (4) trademark
infringement, (5) trademark dilution, (6) unfair competition and (7) unlawful deceptive acts and
practices.11 In response, YSL asserted counterclaims seeking (1) cancellation of the Red Sole Mark
on the grounds that it is (a) not distinctive, (b) ornamental, (c) functional, and (d) was secured by
fraud on the PTO, as well as (2) damages for (a) tortious interference with business relations and
(b) unfair competition.12 After appeal, the US District Courts of Appeals concluded that the District
Court’s decision that a single color can never serve as a trademark in the fashion industry is
inconsistent with the Supreme Court’s decision in Qualitex Co. v. Jacobson Products Co and thus
10 Cases of Interest: Christian Louboutin v. Yves Saint Laurent.” The Fashion Law, January 13, 2021. https://www.thefashionlaw.com/resource-center/cases-ofinterest-christian-louboutin-v-yves-saint-laurent/.
11
Curiam:, Per. “Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc..” Legal research tools from Casetext, March 8, 2013.
https://casetext.com/case/christian-louboutin-sa-v-yves-saint-laurent-am-holding-inc-2.
12IBID
that they “erred by resting its denial of Louboutin’s preliminary injunction motion on that ground.13
This decision was largely due to the fact that the court regarded CL’s red soles as having acquired
“secondary meaning”, as the soles had become associated with a single commercial source and
was seen as a symbol in the fashion industry. Continuing, however, the Court of Appeals “Affirm
in part the order of the District Court, insofar as it declined to enjoin the use of all red lacquered
outsoles”14, thus meaning that CL could not file suit under their Red Sole Mark for all shoes with
a red sole, but rather only for shoes which had a contrasting color with the sole. In fact, the US
Court of Appeals “reverse in part the order of the District Court insofar as it purported to deny
trademark protection to Louboutin's use of contrasting red lacquered outsoles”, thus granting the
ability to protect CL’s trademark if the soles are contrasting15.
Personally, my own opinion regarding this case is reliant on whether YSL’s shoes truly
violated the already valid trademark. First and foremost, the trademark should be 100% valid and
not considered “ornamental” or “functional” because it has truly created a symbol in the fashion
industry. On the other hand, when analyzing whether YSL’s monochrome shoe line courts consider
8 main factors when dealing with an Infringement case, but I will mainly focus on 4: the similarity
between the two marks (1), the similarity of the products involved (2), the strength of the plaintiff’s
mark (3) and the defendant’s lack of good faith in adopting the mark (4) (Twomey). In this specific
case, I personally think there is no similarity between the two marks as the contrast in CL shoes is
what is symbolic of the red sole. As a result, a monochrome shoe truly does not take away or copy
13
“Christian Louboutin S.A. v. Yves Saint Laurent America Inc., No. 11-3303 (2d Cir. 2012).” Justia Law. Accessed May 3, 2022.
https://law.justia.com/cases/federal/appellate-courts/ca2/11-3303/11-3303-2012-09-05.html.
14
“H2O.” Christian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc. Accessed May 3, 2022. https://h2o.law.harvard.edu/cases/4776.
15
Ricketson, Sam. The Law of Intellectual Property. Melbourne, Victoria: Law Book Co., 1984.
CL’s trademark Red Sole Mark because of the lack of contrast in the shoe itself in my opinion. To
continue, the similarity of the products involved is noticeable and definite: they are both high
fashion women’s high heeled shoes and serve the same purpose for the consumer who is
purchasing them. As a result, using this factor, it can be said that the YSL monochrome shoe was
a clear violation of the Red Sole Mark. In addition, when analyzing the strength of the plaintiff’s
mark, I personally look to see whether the item or symbol being marked is uniquely distinct and
innovative: in this situation, a color cannot be deemed a strong trademark, but at the same time the
secondary meaning it has gained throughout the years makes a strong case for the trademark itself.
Finally, whether YSL lacked good faith can be argued in both ways: first and foremost, YSL can
be seen as lacking good faith as they know that the use of the red sole on high fashion women’s
heels is characteristic of CL and thus tried to create a shoe with a red sole to possibly take away
customers from one of its main competitors. On the other hand, however, collections are dropped
extremely often by these brands, so it is likely that eventually a high luxury brand like YSL would
drop a shoe with a red sole. In other words, they are not lacking good faith as the use of color can
be argued as a right by the producer in order to entice a customer to purchase a specific good, a
common practice in business worldwide. In conclusion, I fully agree with the decision of the US
Court of Appeals regarding this case: YSL should have the right to continue selling and promoting
its monochrome color shoes while at the same time a contrasting red sole should be protected for
CL as it is a symbol which has acquired a secondary meaning and thus should be protected under
the Red Sole Mark.
Bibliography
1. “Cases of Interest: Christian Louboutin v. Yves Saint Laurent.” The Fashion Law,
January 13, 2021. https://www.thefashionlaw.com/resource-center/cases-of-interestchristian-louboutin-v-yves-saint-laurent/.
2. “Christian Louboutin S.A. v. Yves Saint Laurent America Inc., No. 11-3303 (2d Cir.
2012).” Justia Law. Accessed May 3, 2022. https://law.justia.com/cases/federal/appellatecourts/ca2/11-3303/11-3303-2012-09-05.html.
3. Curiam:, Per. “Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc..” Legal
research tools from Casetext, March 8, 2013. https://casetext.com/case/christianlouboutin-sa-v-yves-saint-laurent-am-holding-inc-2.
4. “H2O.” Christian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc. Accessed
May 3, 2022. https://h2o.law.harvard.edu/cases/4776.
5. Laster, Deanna. “Council Post: Three Ways Technology Is Significantly Impacting the
Fashion Industry.” Forbes. Forbes Magazine, April 21, 2022.
https://www.forbes.com/sites/forbesbusinesscouncil/2021/12/09/three-ways-technologyis-significantly-impacting-the-fashion-industry/?sh=6ff922ae718f.
6. “Red Ocean Strategy vs Blue Ocean Strategy.” Blue Ocean Strategy, January 21, 2022.
https://www.blueoceanstrategy.com/tools/red-ocean-vs-blue-ocean-strategy/.
7. Ricketson, Sam. The Law of Intellectual Property. Melbourne, Victoria: Law Book Co.,
1984.
8. Smith, P. “Topic: Apparel Market in the U.S.” Statista. Accessed May 3, 2022.
https://www.statista.com/topics/965/apparel-market-in-the-us/.
9. “State of Fashion 2022: An Uneven Recovery and New Frontiers.” McKinsey &
Company. McKinsey & Company, March 31, 2022.
https://www.mckinsey.com/industries/retail/our-insights/state-of-fashion.
10. “Technology, Media & Telecommunications.” McKinsey & Company. Accessed May 3,
2022. https://www.mckinsey.com/industries/technology-media-andtelecommunications/our-insights.
11. Twomey, David P., Marianne Jennings, and Stephanie M. Greene. Business Law:
Principles for Today's Commercial Environment. Boston, MA: Cengage Learning, 2017.
12. VICTOR MARRERO, District Judge. “Christian Louboutin S.A. v. Yves Saint Laurent
Am. Inc..” Legal research tools from Casetext, August 10, 2011.
https://casetext.com/case/christian-louboutin-sa-v-yves-saint-laurent-am-inc.
13. “What Tech Innovation Means for the Business of Fashion.” McKinsey & Company.
McKinsey & Company, December 2, 2021.
https://www.mckinsey.com/industries/technology-media-and-telecommunications/ourinsights/what-tech-innovation-means-for-the-business-of-fashion.
14. “YSL Trademark of Yves Saint Laurent Parfums - Registration Number 0855232 - Serial
Number 72275348 :: Justia Trademarks.” Justia. Accessed May 3, 2022.
https://trademarks.justia.com/722/75/ysl-72275348.html.