Louboutin v YSL 2d Cir 2012.pdf

206 696 FEDERAL REPORTER, 3d SERIES

tion, we conclude that the district court’srejection of Jones’s motion to reduce theamount of punitive damages must be over-turned. We believe the award was imper-missibly excessive. Our ruling should notbe construed as making light of Jones’smisconduct. Without question Jones en-gaged in serious misconduct which justifiesa punitive award. On the other hand, hismisconduct in light of all the circumstanceswas not so egregious as to justify punitivedamages of $300,000. We conclude uponall the relevant factors discussed abovethat the highest level of punitive damagesthat can properly be sustained is $100,000.

CONCLUSION

The judgment awarding punitive dam-ages is hereby vacated, and a new trial isordered limited to the issue of the amountof punitive damages unless Payne agreesto a remittitur reducing the amount ofpunitive damages to $100,000. In all otherrespects, the judgment is affirmed.

,

CHRISTIAN LOUBOUTIN S.A., Chris-tian Louboutin, L.L.C., ChristianLouboutin, Plaintiffs–Counter–Defen-dants–Appellants,

v.

YVES SAINT LAURENT AMERICAHOLDING, INC., Yves Saint LaurentS.A.S., Yves Saint Laurent America,Inc., Defendants–Counter–Claimants–Appellees,

Yves Saint Laurent, (an unincorporatedassociation), John Does, A to Z, (Un-identified), Jane Does, A to Z, (Un-identified), XYZ Companies, 1 to 10,(Unidentified), Defendants–Appellees.

Docket No. 11–3303–cv.

United States Court of Appeals,Second Circuit.

Argued: Jan. 24, 2012.

Decided: Sept. 5, 2012.

Background: French footwear designerbrought action against American competi-tor, alleging that competitor violated Lan-ham Act and New York law by producing‘‘high fashion’’ shoes with designer’s trade-marked, signature lacquered red outsoles.Competitor counter–claimed for cancella-tion of designer’s trademark registration.The United States District Court for theSouthern District of New York, VictorMarrero, J., 778 F.Supp.2d 445, denieddesigner’s motion for preliminary injunc-tion. Designer appealed.

Holding: The Court of Appeals, Jose A.Cabranes, Circuit Judge, held that as lim-ited to outsoles’ color contrast with shoes’upper components, design feature acquiredsecondary meaning.

Affirmed in part and reversed and re-manded in part.

1. Trademarks O1064For purposes of trademark protection,

an ‘‘ornamental feature’’ is one that doesnot serve a purpose in the design of aproduct. Lanham Act, § 1 et seq., 15U.S.C.A. § 1051 et seq.

See publication Words and Phras-es for other judicial constructionsand definitions.

2. Injunction O1092To obtain a preliminary injunction, the

moving party must establish irreparable

207CHRISTIAN LOUBOUTIN v. YVES SAINT LAURENT AMERICACite as 696 F.3d 206 (2nd Cir. 2012)

harm and either (1) a likelihood of successon the merits or (2) sufficiently seriousquestions going to the merits to makethem a fair ground for litigation and abalance of hardships tipping decidedly to-ward the party requesting the preliminaryrelief.

3. Federal Courts O815

Court of Appeals reviews the denial ofa preliminary injunction for an abuse ofdiscretion.

4. Trademarks O1000

Principal purpose of federal trade-mark law is to secure the public’s interestin protection against deceit as to thesources of its purchases, and the business-man’s right to enjoy business earnedthrough investment in the good will andreputation attached to a trade name. Lan-ham Act, § 1 et seq., 15 U.S.C.A. § 1051 etseq.

5. Trademarks O1183

Federal trademark law provides theowner of a mark with the enforceable rightto exclude others from using the mark.Lanham Act, § 1 et seq., 15 U.S.C.A.§ 1051 et seq.

6. Copyrights and Intellectual PropertyO1

Patents O1

Trademarks O1064

Federal trademark law is not intendedto protect innovation by giving the innova-tor a monopoly over a useful product fea-ture; such a monopoly is the realm ofpatent law or copyright law, which seek toencourage innovation, and not of trade-mark law, which seeks to preserve a vigor-ously competitive market for the benefit ofconsumers. Lanham Act, § 1 et seq., 15U.S.C.A. § 1051 et seq.

7. Trademarks O1421Courts analyze trademark infringe-

ment claims in two stages, first looking tosee whether the mark merits protection,and second, if and only if the trademark isdistinctive within the meaning of trade-mark law, and is therefore valid and pro-tectable, the court must then determinewhether the defendant’s use of a similarmark is likely to cause consumer confu-sion. Lanham Act, § 1 et seq., 15U.S.C.A. § 1051 et seq.

8. Trademarks O1030, 1034In order for a mark to be protectable,

it must be distinctive and not generic.Lanham Act, § 1 et seq., 15 U.S.C.A.§ 1051 et seq.

9. Trademarks O1031Mark is said to be inherently distinc-

tive, and thus it is protectable under feder-al trademark law, if its intrinsic natureserves to identify a particular source.Lanham Act, § 1 et seq., 15 U.S.C.A.§ 1051 et seq.

10. Trademarks O1032Even a mark that is not inherently

distinctive may nonetheless acquire dis-tinctiveness, and thus be protectable underfederal trademark law, by developing a‘‘secondary meaning’’ in the public mind,meaning that, in the minds of the public,the primary significance of a product fea-ture is to identify the source of the productrather than the product itself. LanhamAct, § 1 et seq., 15 U.S.C.A. § 1051 et seq.


11. Trademarks O1064If a markholder has successfully dem-

onstrated that its mark is valid and thatthe competitor’s mark is likely to causeconfusion, the competitor can neverthelessprevail by showing that the mark is func-


tional. Lanham Act, § 1 et seq., 15U.S.C.A. § 1051 et seq.

12. Trademarks O1064

Functionality of a mark can be dem-onstrated by, inter alia, showing that themark has either traditional utilitarian func-tionality or aesthetic functionality. Lan-ham Act, § 1 et seq., 15 U.S.C.A. § 1051 etseq.


If a mark is capable of being or be-coming distinctive of the applicant’s goodsin commerce, then it is capable of servingas a trademark. Lanham Act, § 1 et seq.,15 U.S.C.A. § 1051 et seq.

14. Trademarks O1057(2)

Color alone can meet the basic legalrequirements for use as a trademark,where it acts as a symbol that distin-guishes a firm’s goods and identifies theirsource, without serving any other signifi-cant function. Lanham Act, § 1 et seq., 15U.S.C.A. § 1051 et seq.


Aspects of a product that are function-al generally cannot serve as a trademark.Lanham Act, § 1 et seq., 15 U.S.C.A.§ 1051 et seq.

16. Patents O191

Functional features of a product canbe protected only through the patent sys-tem, which grants a limited monopoly oversuch features until they are released intogeneral use.


Product feature is considered to be‘‘functional,’’ and thus not protectable un-der trademark law, in a utilitarian sense ifit is (1) essential to the use or purpose ofthe article, or if it (2) affects the cost or

quality of the article. Lanham Act, § 1 etseq., 15 U.S.C.A. § 1051 et seq.



Product feature is ‘‘essential’’ to theuse or purpose of the article, as requiredto be deemed functional in a utilitariansense, if it is dictated by the functions tobe performed by the article. Lanham Act,§ 1 et seq., 15 U.S.C.A. § 1051 et seq.



Product feature ‘‘affects the cost orquality of the article,’’ as required to bedeemed functional, and thus not protecta-ble under trademark law, where it permitsthe article to be manufactured at a lowercost or constitutes an improvement in theoperation of the goods. Lanham Act, § 1et seq., 15 U.S.C.A. § 1051 et seq.



Generally, where a product’s design isfunctional, there is no need to proceedfurther in the analysis of whether the de-sign is protected by federal trademark law.Lanham Act, § 1 et seq., 15 U.S.C.A.§ 1051 et seq.


When the aesthetic design of a prod-uct is itself the mark for which trademarkprotection is sought, the court may deemthe mark functional, and thus not protecta-ble, if giving the markholder the right touse it exclusively would put competitors ata significant non–reputation–related disad-vantage. Lanham Act, § 1 et seq., 15U.S.C.A. § 1051 et seq.


22. Trademarks O1064Test for aesthetic functionality of a

product feature, for purposes of determin-ing its protectability under federal trade-mark law, is threefold: first, the courtaddresses whether the design feature iseither essential to the use or purpose oraffects the cost or quality of the product atissue, second, if the feature would, from atraditional utilitarian perspective, be con-sidered essential to the use or purpose orto affect its cost or quality, then the designfeature is functional, but, third, if the de-sign feature is not functional from a tradi-tional perspective, it must still be shownnot to have a significant effect on competi-tion in order to receive trademark protec-tion. Lanham Act, § 1 et seq., 15U.S.C.A. § 1051 et seq.

23. Trademarks O1064Lanham Act protection does not ex-

tend to configurations of ornamental fea-tures which would significantly limit therange of competitive designs available.Lanham Act, § 1 et seq., 15 U.S.C.A.§ 1051 et seq.

24. Trademarks O1064Doctrine of aesthetic functionality

bars protection of a mark that is necessaryto compete in the relevant market. Lan-ham Act, § 1 et seq., 15 U.S.C.A. § 1051 etseq.

25. Trademarks O1064Ultimate test of aesthetic functionali-

ty, for purposes of determining a mark’sprotectability, is whether the recognitionof trademark rights in an aesthetic designfeature would significantly hinder competi-tion. Lanham Act, § 1 et seq., 15U.S.C.A. § 1051 et seq.

26. Trademarks O1064Where an ornamental feature is

claimed as a trademark and trademarkprotection would significantly hinder com-

petition by limiting the range of adequatealternative designs, the aesthetic function-ality doctrine denies such protection.Lanham Act, § 1 et seq., 15 U.S.C.A.§ 1051 et seq.


Distinctive and arbitrary arrange-ments of predominantly ornamental fea-tures that do not hinder potential competi-tors from entering the same market withdifferently dressed versions of the productare non–functional, and are hence eligiblefor trademark protection. Lanham Act,§ 1 et seq., 15 U.S.C.A. § 1051 et seq.


Mark is ‘‘aesthetically functional,’’ andtherefore ineligible for protection underthe Lanham Act, where protection of themark significantly undermines competi-tors’ ability to compete in the relevantmarket. Lanham Act, § 1 et seq., 15U.S.C.A. § 1051 et seq.



In making a determination as towhether a mark is aesthetically functional,and therefore ineligible for protection un-der the Lanham Act, courts must carefullyweigh the competitive benefits of protect-ing the source–identifying aspects of amark against the competitive costs of pre-cluding competitors from using the fea-ture. Lanham Act, § 1 et seq., 15U.S.C.A. § 1051 et seq.


In determining whether a mark hasan aesthetic function so as to precludetrademark protection, courts must takecare to ensure that the mark’s very suc-cess in denoting and promoting its sourcedoes not itself defeat the markholder’s


right to protect that mark. Lanham Act,§ 1 et seq., 15 U.S.C.A. § 1051 et seq.

31. Trademarks O1064Analysis of the aesthetic functionality

of a mark is highly fact–specific, requiringthe court to consider both the markhold-er’s right to enjoy the benefits of its effortto distinguish its product and the public’sright to the vigorously competitive marketprotected by the Lanham Act, which anoverly broad trademark might hinder.Lanham Act, § 1 et seq., 15 U.S.C.A.§ 1051 et seq.

32. Trademarks O1057(2)No per se rule governs the protection

of single–color marks in the fashion indus-try. Lanham Act, § 1 et seq., 15 U.S.C.A.§ 1051 et seq.

33. Trademarks O1064Functionality defense to a trademark

infringement claim does not guarantee acompetitor the greatest range for his crea-tive outlet, but only the ability to fairlycompete within a given market. LanhamAct, § 1 et seq., 15 U.S.C.A. § 1051 et seq.

34. Trademarks O1064Purpose of the functionality defense to

a trademark infringement claim is to pre-vent advances in functional design frombeing monopolized by the owner of themark in order to encourage competitionand the broadest dissemination of usefuldesign features. Lanham Act, § 1 et seq.,15 U.S.C.A. § 1051 et seq.

35. Copyrights and Intellectual PropertyO12(1)

Copyright, unlike trademark, rewardscreativity and originality even if they inter-fere with the rights of an existing copy-right holder.

36. Trademarks O1080Trademark system, unlike the copy-

right system, aims to prevent consumer

confusion even at the expense of a manu-facturer’s creativity.


Certificate of registration with theUnited States Patent and Trademark Of-fice (USPTO) is prima facie evidence thatthe mark is registered and valid, that theregistrant owns the mark, and that theregistrant has the exclusive right to usethe mark in commerce. Lanham Act,§ 7(b), 15 U.S.C.A. § 1057(b).


French footwear designer’s trade-marked, signature lacquered red outsolesacquired limited secondary meaning as dis-tinctive symbol to identify his brand, andthus that design feature was valid andprotectable under Lanham Act to extentthat red outsoles contrasted with color ofshoe’s ‘‘upper’’ component; in that context,design feature created ‘‘symbol,’’ as shownby designer’s advertising expenditures,media coverage, and sales success over 20years of use, and created ‘‘brand withworldwide recognition’’ insofar as featurecaused lacquered red outsole to ‘‘pop’’ incontrast to upper’s color, as consumersrecognized contrast between color of out-sole and color of upper as distinctive fea-ture of designer’s footwear. Lanham Act,§ 1 et seq., 15 U.S.C.A. § 1051 et seq.


In the case of a single–color mark,distinctiveness must generally be provedby demonstrating that the mark has ac-quired secondary meaning. Lanham Act,§ 1 et seq., 15 U.S.C.A. § 1051 et seq.


Crucial question in a trademark caseinvolving secondary meaning always iswhether the public is moved in any degreeto buy an article because of its source.


Lanham Act, § 1 et seq., 15 U.S.C.A.§ 1051 et seq.

41. Trademarks O1032Factors that are relevant in determin-

ing secondary meaning in a trademarkcase include (1) advertising expenditures,(2) consumer studies linking the mark to asource, (3) unsolicited media coverage ofthe product, (4) sales success, (5) attemptsto plagiarize the mark, and (6) length andexclusivity of the mark’s use. LanhamAct, § 1 et seq., 15 U.S.C.A. § 1051 et seq.

42. Trademarks O1032Whether a mark has acquired distinc-

tiveness is an inherently factual inquiry.Lanham Act, § 1 et seq., 15 U.S.C.A.§ 1051 et seq.

43. Trademarks O1689Where the record contains sufficient

undisputed facts to resolve the question ofa mark’s distinctiveness, the court may doso as a matter of law. Lanham Act, § 1 etseq., 15 U.S.C.A. § 1051 et seq.

44. Trademarks O1032To determine whether a mark has sec-

ondary meaning, it is not always the gen-eral public’s understanding but, dependingupon the product, often only a segment ofconsumers that need be examined. Lan-ham Act, § 1 et seq., 15 U.S.C.A. § 1051 etseq.

Harley I. Lewin (Lee Carl Brombergand Charles D. Ray, on the brief), McCar-ter & English, LLP, New York, NY, Bos-ton, MA, Hartford, CT, for Plaintiffs–Counter–Defendants–Appellants ChristianLouboutin S.A., Christian Louboutin,L.L.C., Christian Louboutin.

David H. Bernstein (Jyotin Hamid andRayna S. Feldman, on the brief), Debe-

voise & Plimpton LLP, New York, NY, forDefendants–Counter–Claimants–AppelleesYves Saint Laurent America Holding, Inc.,Yves Saint Laurent S.A.S., and Yves SaintLaurent America, Inc., and Defendants–Appellees Yves Saint Laurent, (an unincor-porated association), John Does, A to Z,(Unidentified), Jane Does, A to Z, (Un-identified), XYZ Companies, (Unidenti-fied).

Janet L. Cullum (John W. Crittenden,Cooley LLP, San Francisco, CA, and Su-san J. Hightower, Pirkey Barber LLP,Austin, TX, on the brief), Cooley LLP,New York, NY, for amicus curiae Interna-tional Trademark Association, in supportof Plaintiffs–Counter–Defendants–Appel-lants.

Richard Z. Lehv (Jason D. Jones on thebrief), Fross Zelnick Lehrman & Zissu,P.C., New York, NY, for amici curiae Tif-fany (NJ) LLC and Tiffany & Co., insupport of Plaintiffs–Counter–Defendants–Appellants.

Rebecca Tushnet, Professor of Law,Georgetown University Law Center,Washington, D.C., on the brief, for amicicuriae Professors of Law in Trademarkand Related Fields, in support of Defen-dants–Counter–Claimants–Appellees.

Before: CABRANES, STRAUB, andLIVINGSTON, Circuit Judges.

JOS iE A. CABRANES, Circuit Judge:

The question presented is whether asingle color may serve as a legally protect-ed trademark in the fashion industry and,in particular, as the mark for a particularstyle of high fashion women’s footwear.Christian Louboutin, a designer of high-fashion women’s footwear and accessories,has since 1992 painted the ‘‘outsoles’’ of hiswomen’s high-heeled shoes with a high-gloss red lacquer. In 2008, he registeredthe red lacquered outsole as a trademark


with the United States Patent and TradeOffice (‘‘PTO’’).1 We are asked to decidewhether that mark is protectable underfederal trademark law.

Louboutin, Christian Louboutin S.A.,and Christian Louboutin, L.L.C. (jointly,‘‘Louboutin’’), bring this interlocutory ap-peal from an August 10, 2011 order of theUnited States District Court for the South-ern District of New York (Victor Marrero,Judge ) denying a motion for a preliminaryinjunction against alleged trademark in-fringement by Yves Saint Laurent Amer-ica Holding, Inc., Yves Saint LaurentS.A.S., and Yves Saint Laurent America,Inc. (jointly, ‘‘YSL’’). The District Court,in addressing a difficult and novel issue oftrademark law, held that, because a singlecolor can never be protected by trademarkin the fashion industry, Louboutin’s trade-mark was likely not enforceable. It there-fore declined to enter a preliminary injunc-tion to restrain YSL’s alleged use of themark.

We conclude that the District Court’sholding that a single color can never serveas a trademark in the fashion industry,Christian Louboutin S.A. v. Yves SaintLaurent America, Inc., 778 F.Supp.2d 445,451, 457 (S.D.N.Y.2011) (‘‘Louboutin ’’), isinconsistent with the Supreme Court’s de-cision in Qualitex Co. v. Jacobson Prod-ucts Co., 514 U.S. 159, 162, 115 S.Ct. 1300,131 L.Ed.2d 248 (1995) (‘‘Qualitex ’’), andthat the District Court therefore erred byresting its denial of Louboutin’s prelimi-nary injunction motion on that ground.

We further conclude that Louboutin’strademark, which covers the red, lac-quered outsole of a woman’s high fashionshoe, has acquired limited ‘‘secondarymeaning’’ as a distinctive symbol that iden-tifies the Louboutin brand. As explainedbelow, pursuant to Section 37 of the Lan-ham Act, 15 U.S.C. § 1119, we limit thetrademark to uses in which the red outsolecontrasts with the remainder of the shoe(known as the ‘‘upper’’). We conclude thatthe trademark, as thus modified, is entitledto trademark protection. Finally, we con-clude that, because the monochrome de-sign employed by YSL is not a use ofLouboutin’s modified trademark, we neednot, and indeed should not, address wheth-er YSL’s use of a red outsole risks con-sumer confusion or whether the Louboutinmark, as modified, is ‘‘functional.’’

We therefore (1) affirm in part the orderof the District Court, insofar as it declinedto enjoin the use of all red lacquered out-soles; (2) reverse in part the order of theDistrict Court insofar as it purported todeny trademark protection to Louboutin’suse of contrasting red lacquered outsoles;and (3) enter judgment accordingly. Weremand for further proceedings with re-gard to YSL’s counterclaims.

BACKGROUND2

This appeal arises out of an action forinjunctive relief and enforcement of atrademark brought by Louboutin, togetherwith the corporate entities that constitutehis eponymous French fashion house,

1. Specifically, the registration for the Loub-outin mark states: ‘‘The color(s) red is/areclaimed as a feature of the mark. The markconsists of a lacquered red sole on footwear.’’Joint App’x 294 (capitalization altered).

2. Because the District Court did not hold anevidentiary hearing prior to issuing its rulingon the preliminary injunction, the facts in thissection are principally drawn from the uncon-

tested facts asserted by the plaintiff to theDistrict Court and to us, as well as the factsfound by the District Court in its opinion. SeeLopez Torres v. N.Y. State Bd. of Elections, 462F.3d 161, 172 (2d Cir.2006) (drawing conclu-sions of law based upon facts found by thedistrict court during a preliminary injunctionproceeding), rev’d on other grounds, 552 U.S.196, 128 S.Ct. 791, 169 L.Ed.2d 665 (2008).


against YSL, a venerable French fashioninstitution. Louboutin is best known forhis emphasis upon the otherwise-largely-ignored outsole of the shoe. Since theirdevelopment in 1992, Louboutin’s shoeshave been characterized by their moststriking feature: a bright, lacquered redoutsole, which nearly always contrastssharply with the color of the rest of theshoe.

Christian Louboutin introduced his sig-nature footwear to the fashion market in1992. Since then, his shoes have grown inpopularity, appearing regularly on variouscelebrities and fashion icons. The DistrictCourt concluded, and YSL does not dis-pute, that ‘‘Louboutin [had] invested sub-stantial amounts of capital building a repu-tation and good will, as well as promotingand protecting Louboutin’s claim to exclu-sive ownership of the mark as its signaturein women’s high fashion footwear.’’ Loub-outin, 778 F.Supp.2d at 447. The DistrictCourt further found that Louboutin hadsucceeded in promoting his shoes ‘‘to thepoint where, in the high-stakes commercialmarkets and social circles in which thesethings matter a great deal, the red outsolebecame closely associated with Louboutin.Leading designers have said it, includingYSL, however begrudgingly.’’ Id. at 447–48. As a result of Louboutin’s marketingefforts, the District Court found, the ‘‘flashof a red sole’’ is today ‘‘instantly’’ recogniz-able, to ‘‘those in the know,’’ as Loubout-in’s handiwork. Id. at 448.

On the strength of the fashion world’sasserted recognition of the red sole, Loub-outin on March 27, 2007 filed an applica-tion with the PTO to protect his mark (the‘‘Red Sole Mark’’ or the ‘‘Mark’’). Thetrademark was granted in January 2008,and stated: ‘‘The color(s) red is/areclaimed as a feature of the mark. Themark consists of a lacquered red sole onfootwear.’’ Id. at 449 (capitalization al-

tered). The written description was ac-companied by a diagram indicating theplacement of the color:

In 2011, YSL prepared to market a lineof ‘‘monochrome’’ shoes in purple, green,yellow, and red. YSL shoes in the mono-chrome style feature the same color on theentire shoe, so that the red version is allred, including a red insole, heel, upper, andoutsole. This was not the first time thatYSL had designed a monochrome footwearline, or even a line of footwear with redsoles; indeed, YSL maintains that sincethe 1970s it had sold such shoes in red andother colors.

In January 2011, Louboutin avers, hisfashion house learned that YSL was mar-keting and selling a monochrome red shoewith a red sole. Louboutin requested theremoval of the allegedly infringing shoesfrom the market, and Louboutin and YSLbriefly entered into negotiations in orderto avert litigation.

The negotiations having failed, Loubout-in filed this action on April 7, 2011, assert-ing claims under the Lanham Act, 15U.S.C. § 1051 et seq., for (1) trademarkinfringement and counterfeiting, (2) falsedesignation of origin and unfair competi-tion, and (3) trademark dilution, as well asstate law claims for (4) trademark infringe-ment, (5) trademark dilution, (6) unfaircompetition, and (7) unlawful deceptiveacts and practices. Louboutin also soughta preliminary injunction preventing YSLfrom marketing, during the pendency ofthe action, any shoes, including red mono-chrome shoes, bearing outsoles in a shadeof red identical to the Red Sole Mark, or inany shade which so resembles the RedSole Mark as to cause confusion amongconsumers.


[1] In response, YSL asserted twocounterclaims: (1) seeking cancellation ofthe Red Sole Mark on the grounds that (a)it is not ‘‘distinctive,’’ 3 but instead merely‘‘ornamental,’’ 4 (b) it is ‘‘functional,’’ 5 and(c) it was secured by fraud on the PTO;and (2) seeking damages for (a) tortiousinterference with business relations and(b) unfair competition. On July 22, 2011,after a limited and expedited discoveryprocess, the parties argued the prelimi-nary injunction motion. As noted above,see note 2, ante, the District Court did nothold an evidentiary hearing.

On August 10, 2011, the District Courtissued a Decision and Order denying theinjunction and holding that the Louboutinfashion house had not shown a likelihoodof success on the merits of its claims. Asthe District Court saw it, the ‘‘narrowquestion’’ presented by the case was‘‘whether the Lanham Act extends protec-tion to a trademark composed of a singlecolor used as an expressive and definingquality of an article of wear produced inthe fashion industry’’—that is, ‘‘whetherthere is something unique about the fash-ion world that militates against extending

trademark protection to a single color.’’Louboutin, 778 F.Supp.2d at 451.

Interpreting the Supreme Court’s hold-ing in Qualitex, the District Court ex-plained that color is protectable as a trade-mark only if it ‘‘ ‘acts as a symbol thatdistinguishes a firm’s goods and identifiestheir source, without serving any othersignificant function.’ ’’ Id. at 450 (quotingQualitex, 514 U.S. at 166, 115 S.Ct. 1300)(alteration omitted). The District Courtfurther observed, albeit without citation toauthority, that ‘‘whatever commercial pur-poses may support extending trademarkprotection to a single color for industrialgoods do not easily fit the unique charac-teristics and needs—the creativity, aesth-etics, taste, and seasonal change—that de-fine production of articles of fashion.’’ Id.at 451. For that reason, the DistrictCourt held that, in the fashion industry,single-color marks are inherently ‘‘func-tional’’ and that any such registered trade-mark would likely be held invalid. Id. at457. The Court therefore held that Loub-outin was unlikely to be able to prove thatthe Red Sole Mark was eligible for trade-mark protection, and denied Louboutin’smotion for a preliminary injunction.6 Id.at 449–50, 457. This appeal followed.

3. See Part IV.A, post.

4. An ornamental feature is one that ‘‘do[es]not serve a purpose’’ in the design of a prod-uct. See TrafFix Devices, Inc. v. MarketingDisplays, Inc., 532 U.S. 23, 35, 121 S.Ct.1255, 149 L.Ed.2d 164 (2001); see also Wal-lace Int’l Silversmiths, Inc. v. Godinger SilverArt Co., Inc., 916 F.2d 76, 80 (2d Cir.1990)(holding that ‘‘the features at issue are strictlyornamental because they neither affect theuse of the [product] nor contribute to its effi-cient manufacture’’).

5. ‘‘ ‘[I]n general terms, a product feature isfunctional,’ and cannot serve as a trademark,‘if it is essential to the use or purpose of thearticle or if it affects the cost or quality of thearticle,’ that is, if exclusive use of the featurewould put competitors at a significant non-reputation-related disadvantage.’’ Qualitex,

514 U.S. at 165, 115 S.Ct. 1300 (quotingInwood Labs., Inc. v. Ives Labs., Inc., 456 U.S.844, 850, n. 10, 102 S.Ct. 2182, 72 L.Ed.2d606 (1982)). For a full discussion of thedoctrines of functionality and, more specifi-cally, ‘‘aesthetic functionality,’’ see Part III,post.

6. The District Court also issued an order toshow cause why ‘‘the record of this action asit now exists should not be converted into amotion for partial summary judgment cancel-ling Louboutin’s trademark at issue here forthe reasons stated in the Court’s decisionabove.’’ Louboutin, 778 F.Supp.2d at 458.Nine days later, the Court stayed the entirecase pending the resolution of this appeal.Christian Louboutin S.A. v. Yves Saint LaurentAm., Inc., No. 11–cv–2381 (VM), Docket En-try 60 (S.D.N.Y. Aug. 19, 2011).


On appeal, Louboutin argues that theDistrict Court erred in (1) holding, basedon the doctrine of ‘‘aesthetic functionality,’’that the Red Sole Mark was not entitled tolegal protection; (2) applying the doctrineof aesthetic functionality to hold that asingle color on a fashion item could not actas a trademark; (3) failing to give weightto the statutory presumption of validityderiving from the Red Sole Mark’s regis-tration; (4) applying an improper analysisof trademark infringement and dilution;(5) ignoring allegedly undisputed proof oflikelihood of confusion and irreparableharm; and (6) announcing a per se rule offunctionality in a manner that violatedFederal Rule of Civil Procedure 52.7

DISCUSSION

I. Standard of Review

[2, 3] The District Court may grant apreliminary injunction if the moving partyestablishes ‘‘(a) irreparable harm and (b)either (1) likelihood of success on the mer-its or (2) sufficiently serious questions go-ing to the merits to make them a fairground for litigation and a balance of hard-ships tipping decidedly toward the partyrequesting the preliminary relief.’’ UBSFin. Servs., Inc. v. W. Va. Univ. Hosps.,Inc., 660 F.3d 643, 648 (2d Cir.2011) (inter-nal quotation marks omitted). We reviewthe denial of a preliminary injunction for‘‘abuse of discretion.’’ Dexter 345 Inc. v.Cuomo, 663 F.3d 59, 63 (2d Cir.2011); cf.Sims v. Blot, 534 F.3d 117, 132 (2d Cir.2008) (explaining that the term of art‘‘abuse of discretion’’ includes errors oflaw).

We address the District Court’s order inthree parts. We first consider whether a

single color is protectable as a trademark,both generally and in the specific contextof the fashion industry. We then addressthe doctrine of ‘‘aesthetic functionality’’and consider whether, as the DistrictCourt held, a single-color mark is neces-sarily ‘‘functional’’ in the context of thefashion industry—with the result that nosuch mark could ever be trademarked inthat industry. Finally, we determinewhether the Red Sole Mark is a validtrademark entitled to the protection of theLanham Act.

II. Trademark Protection of Single–Color Marks

We begin by briefly recalling whattrademark law is—and what it is not.

[4, 5] The principal purpose of federaltrademark law is to ‘‘secure the public’sinterest in protection against deceit as tothe sources of its purchases, [and] thebusinessman’s right to enjoy businessearned through investment in the good willand reputation attached to a trade name.’’Fabrication Enters., Inc. v. HygenicCorp., 64 F.3d 53, 57 (2d Cir.1995) (inter-nal quotation mark omitted) (alteration inthe original).

[T]rademark law, by preventing othersfrom copying a source-identifying mark,reduces the customer’s costs of shoppingand making purchasing decisions, for itquickly and easily assures a potentialcustomer that this item—the item withthis mark—is made by the same produc-er as other similarly marked items thathe or she liked (or disliked) in the past.At the same time, the law helps assure aproducer that it (and not an imitating

7. Federal Rule of Civil Procedure 52(a)(2) re-quires that ‘‘[i]n granting or refusing an inter-locutory injunction, the court must TTT state[separately] the findings [of fact] and conclu-sions [of law] that support its action.’’ Loub-

outin asserts that the District Court failed tomake findings of fact as required by that rule,and announced a new per se legal rule ratherthan merely entering conclusions of law.


competitor) will reap the financial, repu-tation-related rewards associated with adesirable product.

Qualitex, 514 U.S. at 163–64, 115 S.Ct.1300 (internal quotation marks, citation,and alteration omitted). In accordancewith these purposes of the Lanham Act,the law provides the owner of a mark withthe ‘‘enforceable right to exclude othersfrom using [the mark].’’ La Societe Ano-nyme des Parfums le Galion v. Jean Pa-tou, Inc., 495 F.2d 1265, 1271 (2d Cir.1974).

[6] Nevertheless, trademark law is notintended to ‘‘protect[ ] innovation by givingthe innovator a monopoly ’’ over a usefulproduct feature. Fabrication Enters.,Inc., 64 F.3d at 59 n. 4 (emphasis added);see Nora Beverages, Inc. v. Perrier Grp. ofAm., 269 F.3d 114, 120 n. 4 (2d Cir.2001)(noting that trademark law should not beused to ‘‘inhibit[ ] legitimate competitionby giving monopoly control to a producerover a useful product’’). Such a monopolyis the realm of patent law or copyright law,which seek to encourage innovation, andnot of trademark law, which seeks to pre-serve a ‘‘vigorously competitive market’’for the benefit of consumers.8 Yurman

Design, Inc. v. PAJ, Inc., 262 F.3d 101,115 (2d Cir. 2001) (internal quotationmarks omitted).

A. The Analytical Framework[7] We analyze trademark infringe-

ment claims in two stages.

[8–10] ‘‘First, we look to see whetherplaintiff’s mark merits protection.’’ LouisVuitton Malletier v. Dooney & Bourke,Inc., 454 F.3d 108, 115 (2d Cir.2006). Inorder for a trademark to be protectable,the mark must be ‘‘distinctive’’ and not‘‘generic.’’ Genesee Brewing Co. v. StrohBrewing Co., 124 F.3d 137, 143 (2d Cir.1997). A mark is said to be ‘‘inherently’’distinctive if ‘‘[its] intrinsic nature servesto identify a particular source.’’ Two Pe-sos, Inc. v. Taco Cabana, Inc., 505 U.S.763, 768, 112 S.Ct. 2753, 120 L.Ed.2d 615(1992).9 Even a mark that is not inherent-ly distinctive may nonetheless ‘‘acquire’’distinctiveness by developing ‘‘secondarymeaning’’ in the public mind. InwoodLabs., Inc. v. Ives Labs., Inc., 456 U.S. 844,851 n. 11, 102 S.Ct. 2182, 72 L.Ed.2d 606(1982). A mark has acquired ‘‘secondarymeaning’’ when, ‘‘in the minds of the pub-lic, the primary significance of a productfeature TTT is to identify the source of theproduct rather than the product itself.’’Id.10

8. See Fabrication Enters., Inc., 64 F.3d at 59n. 4 (‘‘The Lanham Act is not concerned withprotecting innovation by giving the innovatora monopoly, which is the function of patentlaw.’’); cf. Carol Barnhart Inc. v. Econ. CoverCorp., 773 F.2d 411, 421 n. 1 (2d Cir.1985)(Newman, J., dissenting) (‘‘Any concern thatcopyright protection may accord a monopolyto advances in functional design is adequatelymet by confining the scope of copyright pro-tection to the precise expression of the propri-etor’s design.’’ (citation omitted)).

9. Although Two Pesos, and several of the oth-er cases we rely upon, discuss unregisteredtrade dress rather than a registered trade-mark, the infringement analysis is the same.See Wal–Mart Stores, Inc. v. Samara Bros.,Inc., 529 U.S. 205, 210–11, 120 S.Ct. 1339,

146 L.Ed.2d 182 (2000) (noting with approvalinstances in which courts analyzed distinc-tiveness with regard to trade dress by analogyto the law of registered trademarks); LouisVuitton Malletier, 454 F.3d at 115 (noting thatthe ‘‘same analysis [used in claims of tradedress infringement] applies to claims of trade-mark infringement under § 32’’); FabricationEnters., Inc., 64 F.3d at 57 n. 2 (noting thatthe distinction between defendant’s counter-claims of trade dress and trademark infringe-ment was ‘‘immaterial TTT because functional-ity TTT is a defense in both trademark andtrade dress cases’’).

10. ‘‘A certificate of registration with the PTOis prima facie evidence that the mark is regis-tered and valid (i.e., protect[a]ble), that theregistrant owns the mark, and that the regis-


[11, 12] Second, if (and only if) theplaintiff’s trademark is ‘‘distinctive’’ withinthe meaning of trademark law and istherefore valid and protectable, we mustthen determine ‘‘whether [the] defendant’suse of a similar mark is likely to causeconsumer confusion.’’ Louis Vuitton Mal-letier, 454 F.3d at 115. In this secondstage, if a markholder has successfullydemonstrated that its mark is valid andthat the competitor’s mark is likely tocause confusion, ‘‘the competitor can [nev-ertheless] prevail TTT by showing that the[mark] is functional’’—a traditional defenseto the enforcement of a trademark.Stormy Clime Ltd. v. ProGroup, Inc., 809F.2d 971, 974 (2d Cir.1987) (‘‘StormyClime ’’), disapproved on other grounds byTwo Pesos, 505 U.S. at 773, 112 S.Ct. 2753.The ‘‘functionality’’ of a mark can be dem-onstrated by, inter alia, showing that themark has either traditional ‘‘utilitarian’’functionality or ‘‘aesthetic’’ functionality.New Colt Holding Corp. v. RJG Holdingsof Fla., Inc., 312 F.Supp.2d 195, 212(D.Conn.2004); see Section III, post.

With this traditional (if somewhat me-chanical) taxonomy in mind, we turn to thehistory of single-color trademarks.

B. A Brief History of Single–ColorMarks

Prior to the adoption of our modernstatutory trademark scheme in the Lan-ham Act of 1946, 15 U.S.C. § 1051 et seq.,the status of single-color trademarks rest-ed on uncertain ground. See generally Inre Owens–Corning Fiberglas Corp., 774F.2d 1116, 1118–19 (Fed.Cir.1985) (‘‘Ow-ens–Corning ’’). Although as early as 1906

the Supreme Court had expressed aDelphic and suitably ambiguous skepticismthat single-color marks could be registeredas trademarks, see A. Leschen & SonsRope Co. v. Broderick & Bascom Rope Co.,201 U.S. 166, 171, 26 S.Ct. 425, 50 L.Ed.710 (1906) (observing that ‘‘[w]hether merecolor can constitute a valid trade-markmay admit of doubt’’), other courts occa-sionally employed common law unfair com-petition principles to protect the use ofcolor as a distinguishing product feature.See, e.g., Yellow Cab Transit Co. v. Louis-ville Taxicab & Transfer Co., 147 F.2d407, 415 (6th Cir.1945) (holding that theuser of a mark was ‘‘entitled to protectionin its long established use of the coloryellow on its taxicabs TTT, inasmuch as ithas acquired a good will by use of theyellow color scheme on taxicabs by virtueof appropriate application of the doctrineof secondary meaning’’). Although courtsdid not go so far as to hold that single-color marks could merit trademark protec-tion, the recognition by some courts thatcolor standing alone can, in some circum-stances, acquire secondary meaning wasan important building block in the evolu-tion of single-color marks.

After the passage of the Lanham Act,which codified ‘‘in the broadest of terms’’the ‘‘universe’’ of things eligible for trade-mark protection, Qualitex, 514 U.S. at 162,115 S.Ct. 1300, courts ‘‘gradually TTT re-jected the dictum [of earlier cases] TTT tothe effect that color alone is not subject totrademark [protection],’’ Owens–Corning,774 F.2d at 1122, and owners of color-related marks began to enjoy a degree of

trant has the exclusive right to use the markin commerce.’’ Lane Capital Mgmt., Inc. v.Lane Capital Mgmt., Inc., 192 F.3d 337, 345(2d Cir.1999). In order to rebut the presump-tion of validity, the allegedly infringing partymust show, by a preponderance of the evi-dence, see id., that the mark is ineligible for

protection. See 15 U.S.C. § 1115(a) (a partyseeking to invalidate a registration mustprove the existence of a ‘‘legal or equitabledefense or defect TTT which might have beenasserted if such mark had not been regis-tered’’).


enforcement success. See, e.g., Applica-tion of Hehr Mfg. Co., 47 CCPA 1116, 279F.2d 526, 528 (1960) (holding that a squarered label intended for use on automobiletrailer windows was eligible for trademarkregistration); Artus Corp. v. Nordic Co.,512 F.Supp. 1184, 1190 (W.D.Pa.1981)(protecting plaintiff’s arbitrary colorscheme for metal spacers). Nevertheless,the issue of single-color mark registrationlay largely dormant until 1985, when theUnited States Court of Appeals for theFederal Circuit decided Owens–Corning.

[13] Faced with the question ofwhether a fiberglass manufacturer couldtrademark the pink color of its residentialinsulation material, the Federal Circuit inOwens–Corning began by recounting theevolution of color as a product-source de-signator. In language that continues tohold force today, the Court observed thatjurisprudence under the Lanham Act had‘‘developed in accordance with the statuto-ry principle that if a mark is capable ofbeing or becoming distinctive of [the] ap-plicant’s goods in commerce, then it is ca-pable of serving as a trademark.’’ Ow-ens–Corning, 774 F.2d at 1120. Notingthat ‘‘[Owens–Corning’s] use of the color‘pink’ performs no non-trademark func-tion, and is consistent with the commer-cial and public purposes of trademarks,’’the Court concluded that the use ‘‘servesthe classical trademark function of indi-cating the origin of the goods, and there-by protects the public.’’ Id. at 1123. Onthat basis, the Court held that Owens–Corning was ‘‘entitled to register itsmark.’’ Id. at 1128.

C. Single–Color Marks Today

[14] The question of whether a colorcan be protected as a trademark or tradedress was finally resolved in 1995 by theSupreme Court’s decision in Qualitex,which involved a claim for trade dress

protection of the green-gold color of a drycleaning press pad. The question present-ed was ‘‘whether the [Lanham Act] per-mits the registration of a trademark thatconsists, purely and simply, of a color.’’Qualitex, 514 U.S. at 160–61, 115 S.Ct.1300 (citation omitted). Reversing a deci-sion of the Ninth Circuit that had declaredcolor per se ineligible for trademark pro-tection, the Court observed that ‘‘it is diffi-cult to find, in basic trademark objectives,a reason to disqualify absolutely the use ofa color as a mark.’’ Id. at 164, 115 S.Ct.1300. The Court held, among otherthings, that it could find no ‘‘principledobjection to the use of color as a mark inthe important ‘functionality’ doctrine oftrademark law.’’ Id. It concluded that‘‘color alone, at least sometimes, can meetthe basic legal requirements for use as atrademark. It can act as a symbol thatdistinguishes a firm’s goods and identifiestheir source, without serving any othersignificant function.’’ Id. at 166, 115 S.Ct.1300 (emphasis added).

III. The ‘‘Functionality’’ Defense

[15, 16] As the Supreme Court ob-served in Qualitex, aspects of a productthat are ‘‘functional’’ generally ‘‘cannotserve as a trademark.’’ Id. at 165, 115S.Ct. 1300 (internal quotation mark omit-ted). We have observed that ‘‘[t]he doc-trine of functionality prevents trademarklaw from inhibiting legitimate competitionby giving monopoly control to a producerover a useful product.’’ Nora Beverages,Inc., 269 F.3d at 120 n. 4; see GeneseeBrewing Co., 124 F.3d at 145 n. 5 (it is a‘‘fundamental principle of trademark lawthat a trademark TTT does not grant amonopoly of production’’). This is so be-cause functional features can be protectedonly through the patent system, whichgrants a limited monopoly over such fea-tures until they are released into general


use (typically after either 14 or 20 years,depending on the type of patent). SeeFabrication Enters., Inc., 64 F.3d at 58–59& n. 4 (‘‘The Lanham Act is not concernedwith protecting innovation by giving theinnovator a monopoly, which is the func-tion of patent law.’’); Stormy Clime, 809F.2d at 977–78 (‘‘Courts must proceed withcaution in assessing claims to unregisteredtrademark protection in the design ofproducts so as not to undermine the objec-tives of the patent lawsTTTT Since trade-mark protection extends for an unlimitedperiod, expansive trade dress protectionfor the design of products would preventsome functional products from enrichingthe public domain.’’).

As noted above, two forms of the func-tionality doctrine are relevant to us today:‘‘traditional’’ or ‘‘utilitarian’’ functionality,and ‘‘aesthetic’’ functionality. Both formsserve as an affirmative defense to a trade-mark infringement claim.

A. ‘‘Traditional’’ or ‘‘Utilitarian’’Functionality

[17–19] According to our traditionalunderstanding of functionality, a productfeature is considered to be ‘‘functional’’ ina utilitarian sense 11 if it is (1) ‘‘essential to

the use or purpose of the article,’’ or if it(2) ‘‘affects the cost or quality of the arti-cle.’’ Inwood Labs., 456 U.S. at 850 n. 10,102 S.Ct. 2182.12 A feature is essential ‘‘ ‘if[it] is dictated by the functions to be per-formed’ ’’ by the article. LeSportsac, Inc.v. K mart Corp., 754 F.2d 71, 76 (2dCir.1985) (quoting Warner Bros. Inc. v.Gay Toys Inc., 724 F.2d 327, 331 (2d Cir.1983)).13 It affects the cost or quality ofthe article where it ‘‘ ‘permits the article tobe manufactured at a lower cost’ or ‘consti-tutes an improvement in the operation ofthe goods.’ ’’ 14 Id. (quoting Warner Bros.,Inc., 724 F.2d at 331). A finding that aproduct feature is functional according tothe Inwood test will ordinarily render thefeature ineligible for trademark protection.

B. ‘‘Aesthetic Functionality’’

[20, 21] Generally, ‘‘[w]here [a prod-uct’s] design is functional under the In-wood formulation there is no need to pro-ceed further.’’ TrafFix Devices, Inc. v.Marketing Displays, Inc., 532 U.S. 23, 33,121 S.Ct. 1255, 149 L.Ed.2d 164 (2001)(‘‘TrafFix ’’). Nevertheless, as the Su-preme Court had held in 1995 in Qualitex,when the aesthetic design of a product is

11. See Wallace Int’l Silversmiths, Inc. v. Go-dinger Silver Art Co., 916 F.2d 76, 80 (2dCir.1990) (noting that the term ‘‘functionali-ty’’ as commonly understood seems to imply‘‘only utilitarian considerations’’).

12. An issue on appeal in Inwood was whetherthe color of a name-brand prescription pillwas functional, and therefore available foruse by manufacturers of the drug’s genericequivalent, because the color assisted phar-macists in dispensing the correct prescription.See Inwood, 456 U.S. at 847, 849–51, 102S.Ct. 2182; but see id. at 857 n. 20, 102 S.Ct.2182 (declining to rule on the functionality ofthe color).

13. In LeSportsac, K Mart challenged the tradedress of a backpack composed of ‘‘parachutenylon and trimmed in cotton carpet tape withmatching cotton-webbing straps. The zippers

used to open and close the bags [we]re colorcoordinated with the bags themselves, andusually [we]re pulled with hollow rectangularmetal sliders.’’ LeSportsac, 754 F.2d at 74.

14. In Warner Brothers, we cited as examplesKellogg Co. v. National Biscuit Co., 305 U.S.111, 122, 59 S.Ct. 109, 83 L.Ed. 73 (1938), inwhich the pillow shape of a shredded wheatbiscuit was deemed functional because thecost of the cereal would be increased and itsquality lessened by any other form, and FisherStoves Inc. v. All Nighter Stove Works, Inc.,626 F.2d 193, 195 (1st Cir.1980), in which atwo-tier woodstove design was deemed func-tional because it improved the operation ofthe stove. See Warner Bros., Inc., 724 F.2d at331.


itself the mark for which protection issought, we may also deem the mark func-tional if giving the markholder the right touse it exclusively ‘‘would put competitorsat a significant non-reputation-related dis-advantage,’’ Qualitex, 514 U.S. at 165, 115S.Ct. 1300. This remains true even if thereis ‘‘no indication that [the mark has] anybearing on the use or purpose of the prod-uct or its cost or quality.’’ TrafFix, 532U.S. at 33, 121 S.Ct. 1255; see LandscapeForms, Inc. v. Colum. Cascade Co., 70F.3d 251, 253 (2d Cir.1995) (when evaluat-ing design trademarks we consider wheth-er ‘‘certain features of the design are es-sential to effective competition in [the]particular market’’).

[22] As set forth below, the test foraesthetic functionality is threefold: At thestart, we address the two prongs of theInwood test, asking whether the designfeature is either ‘‘essential to the use orpurpose’’ or ‘‘affects the cost or quality’’ ofthe product at issue. Next, if necessary,we turn to a third prong, which is thecompetition inquiry set forth in Qualitex.In other words, if a design feature would,from a traditional utilitarian perspective,be considered ‘‘essential to the use or pur-pose’’ of the article, or to affect its cost orquality, then the design feature is function-al under Inwood and our inquiry ends.15

But if the design feature is not ‘‘functional’’from a traditional perspective, it must still

pass the fact-intensive Qualitex test andbe shown not to have a significant effect oncompetition in order to receive trademarkprotection.

i. The Development of the AestheticFunctionality Doctrine

Although the theory of aesthetic func-tionality was proposed as early as 1938,16

the first court to adopt the theory as thebasis for denial of protection of a designwas the United States Court of Appealsfor the Ninth Circuit in Pagliero v. Wal-lace China Co., 198 F.2d 339 (9th Cir.1952). In Pagliero, the Court of Appealsdetermined that the Wallace China Com-pany was not entitled to the exclusive useof a particular floral design on hotel china,despite its ‘‘creat[ion of] a substantial mar-ket for its products bearing these designsby virtue of extensive advertising.’’ Id. at340. The design, the Court held, was‘‘functional’’ because it satisfied ‘‘a demandfor the aesthetic as well as for the utilitari-an.’’ Id. at 343–44. Because the ‘‘particu-lar feature is an important ingredient inthe commercial success of the product, theinterest in free competition permits its imi-tation in the absence of a patent or copy-right.’’ Id. at 343 (emphasis added).

[23, 24] Despite its apparent counterin-tuitiveness (how can the purely aestheticbe deemed functional, one might ask?), ourCourt has long accepted the doctrine of

15. See, e.g., Industria Arredamenti Fratelli Sa-poriti v. Charles Craig, Ltd., 725 F.2d 18, 19(2d Cir.1984) (interlocking design of couchcushions was a visual ‘‘label’’ but served autilitarian purpose by keeping cushions inplace and was therefore functional).

16. In 1938, the Restatement of Torts statedthat ‘‘[a] feature of goods is functional TTT if itaffects their purpose, action or performance,or the facility or economy of processing, han-dling or using them; it is non-functional if itdoes not have any of such effects.’’ Restate-ment of Torts § 742 (1938). In the official

comment to that Section, the Restatementexplained several ways in which goods ortheir features might be functional. With re-gard to ‘‘goods [that] are bought largely fortheir aesthetic value,’’ the Restatement sug-gested that ‘‘their features may be functionalbecause they definitely contribute to that val-ue and thus aid the performance of an objectfor which the goods are intended.’’ Id.§ 742, cmt. a. This was the first time that acommentator had proposed that an aestheticproduct feature might be functional. See 1McCarthy on Trademarks § 7:79 (4th ed.).


aesthetic functionality. See, e.g., WarnerBros., Inc., 724 F.2d at 329–32 (distinctivecolor and symbols on toy car were notfunctional, and so were protectable astrade dress).17 We have rejected, howev-er, the circular ‘‘important ingredient’’ testformulated by the Pagliero court, whichinevitably penalized markholders for theirsuccess in promoting their product.18 In-stead, we have concluded that ‘‘LanhamAct protection does not extend to configu-rations of ornamental features whichwould significantly limit the range of com-petitive designs available.’’ Coach Leath-erware Co. v. AnnTaylor, Inc., 933 F.2d162, 171 (2d Cir.1991) (emphasis added).Accordingly, we have held that the doc-trine of aesthetic functionality bars protec-tion of a mark that is ‘‘necessary to com-pete in the [relevant] market.’’ Villeroy &Boch Keramische Werke K.G. v. THC Sys.,Inc., 999 F.2d 619, 622 (2d Cir.1993).

ii. A Modern Formulation of theAesthetic Functionality

Doctrine

[25] In 1995, the Supreme Court inQualitex gave its imprimatur to the aesth-etic functionality doctrine, holding that

‘‘[t]he ultimate test of aesthetic functional-ity TTT is whether the recognition oftrademark rights [in an aesthetic designfeature] would significantly hinder compe-tition.’’ Qualitex, 514 U.S. at 170, 115S.Ct. 1300 (quoting Restatement (Third) ofUnfair Competition § 17, cmt. c, at 176(1993)) (internal quotation marks omitted).Six years later, reiterating its Qualitexanalysis, the Supreme Court in TrafFixdeclared that where ‘‘[a]esthetic function-ality [is] the central question,’’ courts must‘‘inquire’’ as to whether recognizing thetrademark ‘‘would put competitors at asignificant non-reputation-related disad-vantage.’’ TrafFix, 532 U.S. at 32–33, 121S.Ct. 1255.

Although we have not recently had occa-sion to apply the doctrine of aesthetic func-tionality thus enunciated by the SupremeCourt, it is clear that the combined effectof Qualitex and TrafFix was to validatethe aesthetic functionality doctrine as ithad already been developed by this Courtin cases including Wallace InternationalSilversmiths, Stormy Clime, and LeSport-sac. See Yurman Design, Inc., 262 F.3dat 116 (confirming, five months after the

17. The doctrine of aesthetic functionality re-mains controversial in our sister circuits,which have applied the doctrine in varyingways (and some not at all). For example, theSeventh Circuit has applied the doctrine ofaesthetic functionality liberally, holding that‘‘[f]ashion is a form of function.’’ See JayFranco & Sons, Inc. v. Franek, 615 F.3d 855,860 (7th Cir.2010). The Sixth Circuit recent-ly discussed the doctrine, but made clear thatit has not yet decided whether or not to adoptit. See Maker’s Mark Distillery, Inc. v. DiageoN. Am., Inc., 679 F.3d 410, 417–19 (6th Cir.2012). The Ninth Circuit has applied thedoctrine inconsistently. See 1 McCarthy onTrademarks § 7:80 (4th ed.) (collectingcases). The Fifth Circuit rejects the doctrineof aesthetic functionality entirely. Bd. of Su-pervisors for La. State Univ. Agric. & Mech.Coll. v. Smack Apparel Co., 550 F.3d 465,487–88 (5th Cir.2008) (arguing that the Su-

preme Court has recognized the aestheticfunctionality doctrine only in dicta, and thattherefore the Fifth Circuit’s long-standing re-jection of the doctrine was not abrogated byQualitex and TrafFix ).

18. See Wallace Int’l Silversmiths, 916 F.2d at80 (‘‘We rejected Pagliero [ ’s ‘important in-gredient’ formulation] in [Le ]Sportsac and re-iterate that rejection here.’’ (internal citationomitted)); Mark P. McKenna, (Dys)function-ality, 48 Hous. L.Rev. 823, 851 (2011)(‘‘Courts that apply the aesthetic functionalitydoctrine today overwhelmingly rely on thetest the Supreme Court endorsed in TrafFix[rather than the Pagliero test], TTT askingwhether exclusive use of the claimed featureput competitors at a significant non-reputa-tion-related disadvantage.’’).


TrafFix decision, that a putative designtrademark is ‘‘aesthetic[ally] functional[ ],’’and therefore barred from trademark pro-tection, if granting ‘‘the right to use [themark] exclusively ‘would put competitorsat a significant non-reputation-related dis-advantage’ ’’ (quoting TrafFix, 532 U.S. at32, 121 S.Ct. 1255)).

[26, 27] On the one hand, ‘‘ ‘[w]here anornamental feature is claimed as a trade-mark and trademark protection would sig-nificantly hinder competition by limitingthe range of adequate alternative designs,the aesthetic functionality doctrine deniessuch protection.’ ’’ Forschner Grp., Inc. v.Arrow Trading Co., 124 F.3d 402, 409–10(2d Cir.1997) (quoting Wallace Int’l Silver-smiths, Inc., 916 F.2d at 81). But on theother hand, ‘‘ ‘distinctive and arbitrary ar-rangements of predominantly ornamentalfeatures that do not hinder potential com-petitors from entering the same marketwith differently dressed versions of theproduct are non-functional[,] and [are]hence eligible for [trademark protec-tion].’ ’’ Fabrication Enters., Inc., 64 F.3dat 59 (quoting Stormy Clime, 809 F.2d at977) (emphasis added).

[28, 29] In short, a mark is aesthetical-ly functional, and therefore ineligible forprotection under the Lanham Act, whereprotection of the mark significantly under-mines competitors’ ability to compete inthe relevant market. See Knitwaves, Inc.v. Lollytogs Ltd., 71 F.3d 996, 1006 (2dCir.1995) (linking aesthetic functionality toavailability of alternative designs for chil-dren’s fall-themed sweaters); LandscapeForms, Inc., 70 F.3d at 253 (holding that‘‘in order for a court to find a productdesign functional, it must first find thatcertain features of the design are essentialto effective competition in a particularmarket’’). In making this determination,courts must carefully weigh ‘‘the competi-tive benefits of protecting the source-iden-

tifying aspects’’ of a mark against the‘‘competitive costs of precluding competi-tors from using the feature.’’ FabricationEnters., Inc., 64 F.3d at 59.

[30] Finally, we note that a productfeature’s successful source indication cansometimes be difficult to distinguish fromthe feature’s aesthetic function, if any.See, e.g., Jay Franco & Sons, Inc. v. Fra-nek, 615 F.3d 855, 857 (7th Cir.2010) (not-ing that ‘‘[f]iguring out which designs[produce a benefit other than source iden-tification] can be tricky’’). Therefore, indetermining whether a mark has an aesth-etic function so as to preclude trademarkprotection, we take care to ensure that themark’s very success in denoting (and pro-moting) its source does not itself defeatthe markholder’s right to protect thatmark. See Wallace Int’l Silversmiths,Inc., 916 F.2d at 80 (rejecting argumentthat ‘‘the commercial success of an aesth-etic feature automatically destroys all ofthe originator’s trademark interest in it,notwithstanding the feature’s secondarymeaning and the lack of any evidence thatcompetitors cannot develop non-infringing,attractive patterns’’).

[31] Because aesthetic function andbranding success can sometimes be diffi-cult to distinguish, the aesthetic functional-ity analysis is highly fact-specific. In con-ducting this inquiry, courts must considerboth the markholder’s right to enjoy thebenefits of its effort to distinguish its prod-uct and the public’s right to the ‘‘vigorous-ly competitive market[ ]’’ protected by theLanham Act, which an overly broad trade-mark might hinder. Yurman Design, Inc.,262 F.3d at 115 (internal quotation markomitted). In sum, courts must avoidjumping to the conclusion that an aestheticfeature is functional merely because it de-notes the product’s desirable source. Cf.Pagliero, 198 F.2d at 343.


iii. Aesthetic Functionality inthe Fashion Industry

[32] We now turn to the per se rule offunctionality for color marks in the fashionindustry adopted by the District Court—arule that would effectively deny trademarkprotection to any deployment of a singlecolor in an item of apparel. As notedabove, the Qualitex Court expressly heldthat ‘‘sometimes[ ] a color will meet ordi-nary legal trademark requirements[, a]nd,when it does so, no special legal rule pre-vents color alone from serving as a trade-mark.’’ Qualitex, 514 U.S. at 161, 115S.Ct. 1300. In other words, the SupremeCourt specifically forbade the implementa-tion of a per se rule that would denyprotection for the use of a single color as atrademark in a particular industrial con-text. Qualitex requires an individualized,fact-based inquiry into the nature of thetrademark, and cannot be read to sanctionan industry-based per se rule. The Dis-trict Court created just such a rule, on thetheory that ‘‘there is something uniqueabout the fashion world that militates

against extending trademark protection toa single color.’’ Louboutin, 778 F.Supp.2dat 451.

Even if Qualitex could be read to permitan industry-specific per se rule of function-ality (a reading we think doubtful), such arule would be neither necessary nor appro-priate here. We readily acknowledge thatthe fashion industry, like other industries,has special concerns in the operation oftrademark law; it has been argued force-fully that United States law does not pro-tect fashion design adequately.19 Indeed,the case on appeal is particularly difficultprecisely because, as the District Courtwell noted, in the fashion industry, colorcan serve as a tool in the palette of adesigner, rather than as mere ornamenta-tion. Louboutin, 778 F.Supp.2d at 452–53.

[33–36] Nevertheless, the functionalitydefense does not guarantee a competitor‘‘the greatest range for [his] creative out-let,’’ id. at 452–53, but only the ability tofairly compete within a given market.20

19. The intellectual property protection offashion design has been for years a subject ofcontroversy among commentators. Somehave proposed working within the confines ofthe current intellectual property system, whileothers have advocated that fashion designmay be an appropriate area for sui generisstatutory protection. See generally C. ScottHemphill & Jeannie Suk, The Law, Culture,and Economics of Fashion, 61 Stan. L.Rev.1147 (2009); see also id. at 1184–90. (In-deed, suggested legislation creating such pro-tection has been considered several times byCongress, although not adopted. See, e.g.,Design Piracy Prohibition Act, H.R.2033,110th Cong. § 2(c) (2007); Design PiracyProhibition Act, S.1957, 110th Cong. § 2(c)(2007).) Still other commentators have sug-gested that intellectual property protection offashion design would be damaging to the in-dustry and should be avoided. See Kal Raus-tiala & Christopher Sprigman, The Piracy Par-adox: Innovation and Intellectual Property inFashion Design, 92 Va. L.Rev. 1687, 1775–77(2006).

It is arguable that, in the particular circum-stances of this case, the more appropriatevehicle for the protection of the Red SoleMark would have been copyright rather thantrademark. See generally Kieselstein–Cord v.Accessories by Pearl, Inc., 632 F.2d 989, 993–94 (2d Cir.1980) (addressing the broad issueof aesthetically functional copyrights andholding that decorative belt buckles that wereused principally for ornamentation could becopyrighted because the primary ornamentalaspect of the buckles was conceptually sepa-rate from their subsidiary utilitarian func-tion); Laura A. Heymann, The Trade-mark/Copyright Divide, 60 SMU L.Rev. 55(2007). However, because Louboutin haschosen to rely on the law of trademarks toprotect his intellectual property, we necessari-ly limit our review to that body of law and donot further address the broad and complexissue of fashion design protection.

20. The trademark system, in this way, standsin sharp contrast to the copyright system.Copyright, unlike trademark, rewards creativ-


See Wallace Int’l Silversmiths, Inc., 916F.2d at 81 (‘‘It is a first principle of trade-mark law that an owner may not use themark as a means of excluding competitorsfrom a TTT market.’’ (emphasis added)).The purpose of the functionality defense‘‘is to prevent advances in functional de-sign from being monopolized by the ownerof [the mark] TTT in order to encouragecompetition and the broadest dissemina-tion of useful design features.’’ Fabrica-tion Enters., Inc., 64 F.3d at 58 (internalquotation marks omitted) (emphasis add-ed).

In short, ‘‘[b]y focusing upon hindrancesto legitimate competition, the [aesthetic]functionality test, carefully applied, can ac-commodate consumers’ somewhat conflict-ing interests in being assured enoughproduct differentiation to avoid confusionas to source and in being afforded thebenefits of competition among producers.’’Stormy Clime, 809 F.2d at 978–79.

IV. The Red Sole Mark

Having determined that no per se rulegoverns the protection of single-colormarks in the fashion industry, any more

than it can do so in any other industry, weturn our attention to the Red Sole Mark.As we have explained, Part II.A, ante, weanalyze a trademark infringement claim intwo stages, asking first whether the mark‘‘merits protection’’ and, second, whetherthe allegedly infringing use of the mark (ora similar mark) is ‘‘likely to cause consum-er confusion.’’ Louis Vuitton Malletier,454 F.3d at 115. The functionality defense(including the tripartite aesthetic function-ality test) is an affirmative defense that weconsider at the second stage of this analy-sis. Stormy Clime, Ltd., 809 F.2d at 974.

[37] We have stated the basic rule that‘‘[a] certificate of registration with thePTO is prima facie evidence that the markis registered and valid (i.e., protect[a]ble),that the registrant owns the mark, andthat the registrant has the exclusive rightto use the mark in commerce.’’ Lane Cap-ital Mgmt., Inc., 192 F.3d at 345. As theDistrict Court correctly noted, ‘‘Loubout-in’s certificate of registration of the RedSole Mark gives rise to a statutory pre-sumption that the mark is valid.’’ 21 Loub-outin, 778 F.Supp.2d at 450 (citing 15

ity and originality even if they interfere withthe rights of an existing copyright holder. Inthe copyright system there is a defense toinfringement known as ‘‘independent cre-ation’’: if a writer or musician, through thecreative process, independently arrives at anarrangement of words or notes that is thesubject of a copyright, he may market theresult of his creativity despite the existingcopyright. See Feist Publ’ns, Inc. v. Rural Tel.Serv. Co., 499 U.S. 340, 346, 111 S.Ct. 1282,113 L.Ed.2d 358 (1991) (requesting that thereader ‘‘assume that two poets, each ignorantof the other, compose identical poems. Nei-ther work is novel, yet both are original and,hence, copyrightable’’); Procter & Gamble Co.v. Colgate–Palmolive Co., 199 F.3d 74, 77–78(2d Cir.1999). The trademark system, unlikethe copyright system, aims to prevent con-sumer confusion even at the expense of amanufacturer’s creativity: in trademark, if abranding specialist produces a mark that is

identical to one already trademarked by an-other individual or corporation, he must ‘‘goback to the drawing board.’’ See Blendco,Inc. v. Conagra Foods, Inc., 132 Fed.Appx.520, 523 (5th Cir.2005) (although defendant’sallegedly independent creation of infringingmark tended to show that infringement wasnot willful, defendant remained liable fordamages); Tuccillo v. Geisha NYC, LLC, 635F.Supp.2d 227 (E.D.N.Y.2009) (same).

21. Louboutin argues that the District Courtdisregarded the statutory presumption of va-lidity to which the Red Sole Mark was enti-tled. We disagree. The District Court’s rul-ing rested at least in part on its determinationthat the Red Sole Mark is functional and istherefore invalid, and its opinion clearly rec-ognized that, at the threshold of analysis,Louboutin was entitled to the statutory pre-sumption.


U.S.C. § 1057(b)).22 But the DistrictCourt found, in effect, that YSL had rebut-ted that presumption by showing that theRed Sole Mark is ineligible for protectionbecause a single color can never achievetrademark protection in the fashion indus-try. As explained above, that holding waserror.

Although, as set forth below, we deter-mine that the Mark as it currently standsis ineligible for protection insofar as itwould preclude competitors’ use of redoutsoles in all situations, including themonochromatic use now before us, we con-clude that the Mark has acquired second-ary meaning—and thus the requisite ‘‘dis-tinctness’’ to merit protection—when usedas a red outsole contrasting with the re-mainder of the shoe. Because in this casewe determine that the Red Sole Markmerits protection only as modified, andbecause YSL’s use of a red outsole onmonochromatic red shoes does not in-fringe on the Mark as modified, we neednot, and do not, reach the issues of cus-tomer confusion and functionality at thesecond stage of the trademark infringe-ment analysis described above.

A. Distinctiveness

[38] We first address whether the RedSole Mark ‘‘merits protection’’ as a distinc-tive mark. As discussed above, distinc-tiveness may be shown either by proof thatthe mark is itself inherently distinctive, orby showing that the mark has acquired,through use, secondary meaning in thepublic eye. See Wal–Mart Stores, Inc. v.Samara Bros., Inc., 529 U.S. 205, 210–11,120 S.Ct. 1339, 146 L.Ed.2d 182 (2000);Inwood Labs., 456 U.S. at 851 n. 11, 102

S.Ct. 2182 (‘‘[S]econdary meaning’’ is ac-quired when ‘‘in the minds of the public,the primary significance of a product fea-ture TTT is to identify the source of theproduct rather than the product itself’’).For the reasons that follow, we hold thatthe Red Sole Mark has acquired limitedsecondary meaning as a distinctive symbolthat identifies the Louboutin brand, andthat it is therefore a valid and protectablemark as modified below. See PaperCutter,Inc. v. Fay’s Drug Co., Inc., 900 F.2d 558,559 (2d Cir.1990) (a mark having second-ary meaning is a valid mark).

[39] Although a single color, standingalone, can almost never be inherently dis-tinctive because it does not ‘‘almost auto-matically tell a customer that [it] refer[s]to a brand,’’ Qualitex, 514 U.S. at 162–63,115 S.Ct. 1300 (emphasis omitted); seeMana Prods., Inc. v. Columbia CosmeticsMfg., Inc., 65 F.3d 1063, 1070 (2d Cir.1995), a color as used here is certainlycapable of acquiring secondary meaning.As the Qualitex Court put it,

over time, customers may come to treata particular color on a product or itspackaging (say, a color that in contextseems unusual, such as pink on a firm’sinsulating material or red on the head ofa large industrial bolt) as signifying abrand. And, if so, that color would havecome to identify and distinguish thegoods—i.e., ‘‘to indicate’’ their‘‘source’’—much in the way that descrip-tive words on a product TTT can come toindicate a product’s origin.

Id. at 163, 115 S.Ct. 1300 (emphasis add-ed). In the case of a single-color mark,therefore, distinctiveness must generallybe proved by demonstrating that the mark

22. We note that a registered trademark thathas been in continuous use for at least fiveyears may, in certain circumstances, bedeemed ‘‘incontestable.’’ 15 U.S.C. § 1065;see Maker’s Mark Distillery, Inc., 679 F.3d at

417–18. Because the Red Sole Mark has notbeen in use for five consecutive years since itsregistration, it is not yet entitled to the specialprotection available to incontestable marks.


has acquired secondary meaning. Id. at165–66, 115 S.Ct. 1300.

We see no reason why a single-colormark in the specific context of the fashionindustry could not acquire secondarymeaning—and therefore serve as a brandor source identifier—if it is used so consis-tently and prominently by a particular de-signer that it becomes a symbol, ‘‘the pri-mary significance’’ of which is ‘‘to identifythe source of the product rather than theproduct itself.’’ Inwood Labs., 456 U.S. at851 n. 11, 102 S.Ct. 2182; see also ManaProds., Inc., 65 F.3d at 1071 (‘‘In light ofthe Supreme Court’s decision in Qualitex,color is today capable of obtaining trade-mark status in the same manner that adescriptive mark satisfies the statutorydefinition of a trademark, by acting as asymbol and attaining secondary mean-ing.’’).

[40–44] ‘‘The crucial question in a caseinvolving secondary meaning always iswhether the public is moved in any degreeto buy an article because of its source.’’ 23

Genesee Brewing Co., 124 F.3d at 143 n. 4.‘‘Factors that are relevant in determiningsecondary meaning include ‘(1) advertisingexpenditures, (2) consumer studies linkingthe mark to a source, (3) unsolicited mediacoverage of the product, (4) sales success,(5) attempts to plagiarize the mark, and,(6) length and exclusivity of the mark’suse.’ ’’ Id. (quoting Centaur Commc’ns,Ltd. v. A/S/M Commc’ns, Inc., 830 F.2d1217, 1222 (2d Cir.1987)). Whether amark has acquired distinctiveness is ‘‘aninherently factual inquiry.’’ Yarmuth–Dion, Inc. v. D’ion Furs, Inc., 835 F.2d

990, 993 (2d Cir.1987). Where, as here,the record contains sufficient undisputedfacts to resolve the question of distinctive-ness—not to speak of facts found by theDistrict Court that are based upon evi-dence of record and not clearly errone-ous—we may do so as a matter of law.See id. at 993–94; Warner Bros., Inc. v.Gay Toys, Inc., 724 F.2d 327, 333–34 (2dCir.1983) (determining, based on theweight of the evidence, that the challengedmark had established secondary meaning).

The record before the District Courtincluded extensive evidence of Louboutin’sadvertising expenditures, media coverage,and sales success, demonstrating both thatLouboutin has created a ‘‘symbol’’ withinthe meaning of Qualitex, see Qualitex, 514U.S. at 162, 115 S.Ct. 1300, and that thesymbol has gained secondary meaning thatcauses it to be ‘‘uniquely’’ associated withthe Louboutin brand, see Two Pesos, Inc.,505 U.S. at 766 n. 4, 112 S.Ct. 2753. Thereis no dispute that Louboutin originatedthis particular commercial use of the lac-quered red color over twenty years ago.As the District Court determined, in find-ings of fact that are supported by therecord and not clearly erroneous, ‘‘Loub-outin invested substantial amounts of capi-tal building a reputation and good will, aswell as promoting and protecting Loubout-in’s claim to exclusive ownership of themark as its signature in women’s highfashion footwear.’’ Louboutin, 778F.Supp.2d at 447. And there is no disputethat Louboutin’s efforts were successful‘‘to the point where, in the high-stakescommercial markets and social circles in

23. Importantly, to determine whether a markhas secondary meaning, ‘‘it is not always thegeneral public’s understanding but—depend-ing upon the product—often only a segmentof consumers that need be examined.’’ Cen-taur Commc’ns, Ltd. v. A/S/M Commc’ns, Inc.,830 F.2d 1217, 1221 (2d Cir.1987); see, e.g.,Harlequin Enters. Ltd. v. Gulf & Western

Corp., 644 F.2d 946, 950 n. 2 (2d Cir.1981)(finding that a survey of ‘‘500 romance read-ers in three cities’’ in which fifty percent ofthe respondents identified a certain book cov-er design as having been produced by a cer-tain publisher was ‘‘probative of secondarymeaning’’).


which these things matter a great deal, thered outsole became closely associated withLouboutin,’’ id. at 447–48 (emphasis add-ed), and where unsolicited media attentionto that red sole became rampant. Indeed,the Chief Executive Officer of YSL’s par-ent corporation, Francois–Henri Pinault,himself acknowledged that, ‘‘[i]n the fash-ion or luxury world, it is absolutely clearthat we recognize the notoriety of the dis-tinctive signature constituted by the redsole of LOUBOUTIN models in contrastwith the general presentation of the model,particularly its upper, and so for all shadesof red.’’ 24 Joint App’x 529.

In light of the evidence in the record,including extensive consumer surveyssubmitted by both parties during the pre-liminary injunction proceedings, and ofthe factual findings of the District Court,we think it plain that Louboutin’s mar-keting efforts have created what the abledistrict judge described as ‘‘a TTT brandwith worldwide recognition,’’ Louboutin,778 F.Supp.2d at 448. By placing thecolor red ‘‘in [a] context [that] seems un-usual,’’ Qualitex, 514 U.S. at 162, 115S.Ct. 1300, and deliberately tying thatcolor to his product, Louboutin has creat-ed an identifying mark firmly associatedwith his brand which, ‘‘to those in theknow,’’ ‘‘instantly’’ denotes his shoes’source, Louboutin, 778 F.Supp.2d at 448.These findings of fact by the DistrictCourt in addressing a motion for a pre-

liminary injunction are not clearly erro-neous. We hold that the lacquered redoutsole, as applied to a shoe with an ‘‘up-per’’ 25 of a different color, has ‘‘come toidentify and distinguish’’ the Louboutinbrand, Qualitex, 514 U.S. at 163, 115S.Ct. 1300, and is therefore a distinctivesymbol that qualifies for trademark pro-tection.

We further hold that the record fails todemonstrate that the secondary meaningof the Red Sole Mark extends to uses inwhich the sole does not contrast with theupper—in other words, when a red sole isused on a monochromatic red shoe. Asthe District Court observed, ‘‘[w]hen Hol-lywood starlets cross red carpets and highfashion models strut down runways, andheads turn and eyes drop to the celebri-ties’ feet, lacquered red outsoles on high-heeled, black shoes flaunt a glamorousstatement that pops out at once.’’ Loubout-in, 778 F.Supp.2d at 448 (emphasis added).As clearly suggested by the District Court,it is the contrast between the sole and theupper that causes the sole to ‘‘pop,’’ and todistinguish its creator.

The evidentiary record further demon-strates that the Louboutin mark is closelyassociated with contrast. For example,Pinault, the chief executive of YSL’s par-ent company, wrote that the ‘‘distinctivesignature’’ of the Mark is in its ‘‘contrastwith the general presentation of the [shoe],particularly its upper.’’ Joint App’x 529.

24. As an example of the interest of plagiariz-ers in ‘‘knocking off’’ Louboutin’s mark—an-other Centaur Communications consider-ation—we take judicial notice, pursuant toFederal Rule of Evidence 201, of a recentseizure by the United States Bureau of Cus-toms and Border Protection of over 20,000counterfeit Louboutin shoes illegally shippedto the United States, with an estimated retailvalue of over $18 million. CBP Seizes Morethan 18 Million in Fake Women’s FashionShoes, U.S. Dep’t of Homeland Sec., Customs& Border Prot. (Thursday, Aug. 16, 2012),

http://www.cbp.gov/xp/cgov/newsroom/newsreleases/local/08162012 5.xml; see Ives Labs.,Inc. v. Darby Drug Co., 638 F.2d 538, 544 n. 8(2d Cir.1981) (taking judicial notice of exis-tence of official government proceeding),rev’d on other grounds by Inwood Labs., Inc. v.Ives Labs., Inc., 456 U.S. 844, 102 S.Ct. 2182,72 L.Ed.2d 606 (1982).

25. As noted above, we use the word ‘‘upper’’to refer to the visible portions of the shoeother than the outsole.


Of the hundreds of pictures of Louboutinshoes submitted to the District Court, onlyfour were monochrome red. Compare id.19, 415, 438, 587 (depicting monochromeLouboutin shoes), with id. 415–27, 431–47,593–653, 680–724 (photographs and newsarticles depicting Louboutin shoes). AndLouboutin’s own consumer surveys showthat when consumers were shown the YSLmonochrome red shoe, of those consumerswho misidentified the pictured shoes asLouboutin-made, nearly every one citedthe red sole of the shoe, rather than itsgeneral red color. We conclude, basedupon the record before us, that Louboutinhas not established secondary meaning inan application of a red sole to a red shoe,but only where the red sole contrasts withthe ‘‘upper’’ of the shoe. The use of a redlacquer on the outsole of a red shoe of thesame color is not a use of the Red SoleMark.

Because we conclude that the secondarymeaning of the mark held by Louboutinextends only to the use of a lacquered redoutsole that contrasts with the adjoiningportion of the shoe, we modify the RedSole Mark, pursuant to Section 37 of theLanham Act, 15 U.S.C. § 1119,26 insofar asit is sought to be applied to any shoebearing the same color ‘‘upper’’ as theoutsole. We therefore instruct the Di-rector of the Patent and Trade Office tolimit the registration of the Red Sole Markto only those situations in which the redlacquered outsole contrasts in color withthe adjoining ‘‘upper’’ of the shoe. See id.

In sum, we hold that the Red Sole Markis valid and enforceable as modified. Thisholding disposes of the Lanham Act claimsbrought by both Louboutin and YSL be-

cause the red sole on YSL’s monochromeshoes is neither a use of, nor confusinglysimilar to, the Red Sole Mark. We there-fore affirm the denial of the preliminaryinjunction insofar as Louboutin could nothave shown a likelihood of success on themerits in the absence of an infringing useof the Red Sole Mark by YSL.

B. Likelihood of Confusion andFunctionality

Having limited the Red Sole Mark asdescribed above, and having establishedthat the red sole used by YSL is not a useof the Red Sole Mark, it is axiomatic thatwe need not—and should not—address ei-ther the likelihood of consumer confusionor whether the modified Mark is function-al.

CONCLUSION

To summarize:

We hold that the District Court’s conclu-sion that a single color can never serve asa trademark in the fashion industry wasbased on an incorrect understanding of thedoctrine of aesthetic functionality and wastherefore error. We further hold that theDistrict Court’s holding, that Louboutin’strademark has developed ‘‘secondarymeaning’’ in the public eye, was firmlyrooted in the evidence of record and wasnot clearly erroneous, and that the RedSole Mark is therefore a valid and enforce-able trademark. We limit the Red SoleMark pursuant to Section 37 of the Lan-ham Act, 15 U.S.C. § 1119, to a red lac-quered outsole that contrasts with the col-or of the adjoining ‘‘upper.’’

26. 15 U.S.C. § 1119 provides that ‘‘[i]n anyaction involving a registered mark the courtmay determine the right to registration, orderthe cancellation of registrations, in whole orin part, restore canceled registrations, andotherwise rectify the register with respect to

the registrations of any party to the action.Decrees and orders shall be certified by thecourt to the Director, who shall make appro-priate entry upon the records of the Patentand Trademark Office, and shall be controlledthereby.’’ (emphasis added).

229U.S. v. CARTERCite as 696 F.3d 229 (2nd Cir. 2012)

Accordingly, we (1) affirm in part theorder of the District Court, insofar as itdeclined to enjoin the use of a red lac-quered outsole as applied to a monochromered shoe; (2) reverse in part the order ofthe District Court insofar as it purportedto deny trademark protection to Loubout-in’s use of contrasting red lacquered out-soles; and (3) enter judgment accordingly.

We remand for further proceedings withregard to YSL’s counterclaims. In theinterest of judicial economy, either partymay restore jurisdiction to this Court toconsider whatever arguments remain orarise relating to this case by sending aletter to the Clerk of this Court within 14days of the District Court’s final judgment.Any such proceedings will be assigned tothis panel.

The Clerk of the Court is hereby direct-ed to notify the Director of the UnitedStates Patent and Trade Office of thisJudgment, which concerns U.S. Trade-mark Registration No. 3,361,597 held byChristian Louboutin and dated January 1,2008.

,

UNITED STATES of America,Appellee,

v.

Ronald CARTER, Defendant–Appellant.

Docket No. 11–3605–cr.

United States Court of Appeals,Second Circuit.

Submitted: Sept. 20, 2012.

Decided: Sept. 28, 2012.

Background: Defendant pled guilty in theUnited States District Court for the

Northern District of New York, FrederickJ. Scullin, Jr., J., to conspiracy to distrib-ute, and conspiracy to possess with intentto distribute, fifty grams or more of co-caine base and was sentenced to 10 yearsin prison as the statutory mandatory mini-mum. Defendant appealed.

Holding: The Court of Appeals, Jose A.Cabranes, Circuit Judge, held that districtcourt was not authorized to sentence de-fendant below statutory mandatory mini-mum sentence.

Affirmed.

1. Criminal Law O1156.2

Appellate courts review the procedur-al and substantive reasonableness of a dis-trict court’s sentencing decision for anabuse of discretion, keeping in mind that adistrict court has abused its discretion if itbased its ruling on an erroneous view ofthe law or on a clearly erroneous assess-ment of the evidence, or rendered a deci-sion that cannot be located within therange of permissible decisions.

2. Criminal Law O1139

Appellate courts review de novo thelegal aspects of a district court’s decisionto apply a mandatory minimum sentence.

3. Conspiracy O51

Sentencing and Punishment O34

Following defendant’s guilty plea toconspiracy to distribute and conspiracy topossess with intent to distribute fiftygrams or more of cocaine base, districtcourt was not authorized to sentence de-fendant below statutory mandatory mini-mum sentence of 10 years imprisonmentby sentencing statute listing various fac-tors to determine a sentence; sentencingstatute applied ‘‘except as otherwise specif-ically provided,’’ and statute under whichdefendant was convicted contained specific

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