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CBP is not the only enforcer of Louboutin's trademark. After Louboutin entered into a major legal battle with its competitor, Yves St. Laurent (YSL), the district court determined that the red-sole mark was invalid because a "monopoly on the color red would impermissibly hinder competition amongst other participants." This was mostly overturned just this week, as the U.S. Court of Appeals for the Second Circuit found that Louboutin had the right to trademark its red soles, as long as the color of the sole contrasted with the rest of the shoe. The appellate court held that the doctrine of aesthetic functionality is a valid defense in the Second Circuit in cases “where protection of the mark significantly undermines competitors’ ability to compete in the relevant market” (emphasis in original). A mark is aesthetically functional if granting exclusive protection to the feature “would put competitors at a significant non-reputation-related disadvantage,” citing TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 32-33 (2001).The appellate court concluded that the red, lacquered outsole had acquired limited secondary meaning "as a distinctive symbol that identifies the Louboutin brand."
The greatest lesson from this saga, for all producers of distinctive goods, is the importance of working with an attorney to register your trademark with the U.S.P.T.O. and then record those registered marks with CBP’s Intellectual Property Rights e-Recordation system. Christian Louboutin has U.S. Customs and Border Protection policing its brand from Chinese counterfeiters at our country's borders, while the Federal Court system protects its product's distinctiveness from legitimate big-pocket competitors. This kind of protection is invaluable for any manufacturer, designer, producer, or importer - just follow the saga of the red-sole shoes.
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Customs and International Trade Law Group
GrayRobinson, P.A.
1221 Brickell Avenue
Suite 1600
Miami, Florida 33131
Office: (305) 416-6960
Mobile: (954) 270-1864Peter.Quinter@Gray-Robinson.com
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