Virginia Business Litigation Lawyer Blog

A new line of women's footwear now being sold by Yves Saint-Laurent has high-end French shoe designer Christian Louboutin seeing red. Louboutin's companies, asserting that a new line of red Yves Saint-Laurent shoes violates their U.S. trademark, recently filed a trademark infringement suit in federal court in Manhattan against YSL. The lawsuit raises the interesting question: can a color be trademarked?

Louboutin's trademark lawyers explain that the issue isn't about ownership of a color so much as whether a shoe designer can have a proprietary interest in the use of distinctive red soles. According to the complaint, Louboutin first thought of the idea of painting the outer soles of his shoes red in 1992. Ever since then--for nearly two decades--every shoe in his collection has had that distinctive stylistic feature.

"Louboutin Footwear is instantly recognizable as a result of Plaintiffs' trademark red outsole," the complaint declares. "The location of the bright color on the outsole of a woman's pump is said to provide an alluring 'flash of red' when a woman walks down the street, or on the red carpet of a special event." The complaint provides a long list of celebrities who have worn the shoes and even includes two photos of the Carrie Bradshaw character on Sex and the City, played by Sarah Jessica Parker, wearing the shoes with the "alluring flash of red."

Louboutin applied for a U.S. trademark for the "lacquered red sole" and received a trademark in 2008. According to the complaint, the U.S. Patent and Trademark Office found that the mark "had acquired distinctiveness based on its many years of continuous use in commerce," consumer recognition, and media attention.

The Supreme Court has held that under some circumstances, a color can be trademarked. To win its case, Louboutin will need to show that red outsoles are associated with his design company by most women's high-end shoe purchasers. In other words, he will need to show that the red soles have acquired "secondary meaning" in the minds of his customers and prospective customers. (Think of brown delivery trucks. You associate them with UPS, right? That's a trademark.)

Louboutin will also need to show that the red color is not "functional" but decorative. The idea here is that no one manufacturer should be able to monopolize the use of a color that is an integral part of the way the product works (orange flotation devices, for example). It is not clear how the so-called "aesthetic functionality" test will apply to high-fashion items like shoes that cost more than $1,000 a pair.

Lacoste Alligator, S.A., which sells tennis shirts and other apparel with the distinctive green crocodile logo in high-end stores like Nordstrom and Saks Fifth Avenue, will get a chance to find out, through discovery in a lawsuit, which of its distributors (if any) have been selling its products to Costco and other warehouse stores without its express permission, in violation of its trademark rights and in breach of contract.

Lacoste, a Swiss company, is attempting to prevent its clothing from being sold in big-box and other unauthorized retail locations. The first problem facing Lacoste, however, was that although it believed that some distributor was making sales to those stores, it didn't know who it was. Accordingly, it filed a "John Doe" complaint in Arlington County Circuit Court on trademark-infringement, breach of contract, and other grounds, hoping to use discovery in the case to ferret out the identity of the distributor responsible for the unauthorized sales. After filing the "John Doe" suit, Lacoste promptly served a subpoena on Costco Wholesale Corp., trying to ascertain the source from which it was receiving Lacoste products for resale in its stores. Costco objected to handing over any documents, and Lacoste filed a motion to compel compliance with the subpoena.

Judge Joanne F. Alper overruled most of Costco's objections and held that Lacoste was entitled to the discovery subject to the entry of an appropriate protective order to prevent misuse of the information.

Costco had raised three objections to turning over the requested documents to Lacoste. First, Costco contended that the court lacked jurisdiction because it was pursuing a "John Doe" action without naming the defendant, a type of case that it asserted is permitted in Virginia only in uninsured motorist or "cybersmear" cases. Judge Alper, however, found nothing in Virginia law to bar the use of a "John Doe" suit in a commercial case like this one. Lawyers frequently use the "John Doe" lawsuit mechanism, in fact, when a defendant's identity is unknown.

Second, Costco contended that the identity of its suppliers is a protectable trade secret. The court agreed, but noted that trade secrets are not automatically insulated from discovery. Rather, courts should examine whether the desired information is relevant to the lawsuit and must consider whether the information can be disclosed while minimizing the risk of disclosure to third parties. Judge Alper found that the information was unquestionably relevant and that it could be disclosed within the confines of a protective order preserving its confidentiality.

The protective order also disposed of Costco's third argument: that the subpoena was overly broad and burdensome. The protective order limited Costco's obligation to comply with the subpoena to documents relevant only to the determination of John Doe's identity. Therefore, subject to the limitations provided in the protective order, the court ordered Costco to comply with the subpoena.

Apple Inc. has done very well with its App Store, a service that permits users to download programs of every type for use on their iPhones, iPods, iPads, and computers. With more than 350,000 software offerings, it's by far the largest place online for people to get hold of the programs they want for their Apple devices. Apple's trademark lawyers are now seeking to protect and enforce a trademark in the name "App Store," a phrase they claim exclusive rights to, by filing a lawsuit in federal court against Amazon.com. It claims Amazon's "Appstore" is infringing upon Apple's trademark. Amazon's activities, Apple alleges, are causing irreparable harm to Apple, and Apple is trying to get an injunction and damages from Amazon.

The case raises a lot of interesting issues. First, is the term "app store" even subject to trademark protection? Generic terms like "grocery store" and "shoe store" generally cannot be trademarked because they merely identify the product or service being offered. If an "app store" is merely a store that sells "apps," which is usually viewed as a shorthand term for computer applications or software, the courts may treat the term no differently than it would a proposed trademark for a "shoe store." In that case, Apple's efforts would fail.

On the other hand, Apple will no doubt contend that it has used the term "app store" exclusively since 2008 and has advertised it extensively - and thus that the term has acquired a "secondary meaning" under trademark law. That means that when consumers think of an "app store," they think of Apple's highly popular service. So if Amazon uses the term, the argument runs, consumers will come to the incorrect conclusion that Amazon's "app store" is identical with the Apple service, and Apple's business will be harmed.

There are some interesting twists here. First, it's not clear from the complaint whether Apple is claiming that "App" is actually a shortened form of its own name, "Apple." The two words certainly have a lot in common, yet it seems unlikely that many people would associate them with each other. Second, Apple doesn't have a registered U.S. trademark on the term "App Store," although its application for the mark was approved by the U.S. Patent and Trademark Office. Its efforts to trademark the term have at least temporarily been stymied by Microsoft, which has opposed the registration before the Trademark Trial and Appeal Board. Among other things, Microsoft contends that the word is a generic term.

Finally, the absence of a registered U.S. trademark is probably not fatal to Apple's efforts. It still claims trademark infringement because of its extensive use of the mark in commerce. It also claims common-law trademark infringement as well as claims under California state law.

Ultimately, this battle of the tech giants may turn on what the evidence says about consumers' perception of the words "app store": Are these words inevitably connected in people's minds with Apple, or do they just give the common name of a well-known type of software service?