Hardly a Black-and-White Matter: Analyzing the Validity and Protection of Single-Color Trademarks within the Fashion Industry
Winckel, Emilie, Vanderbilt Law Review
I. THE FIRST SKETCH
The fashion industry thrives because of the consuming public's desire to be affiliated with appealing brands. Some of these coveted brands are best identified by particular colors-for example, Tiffany & Co.'s blue, Hermes's orange, and Christian Louboutin's red. Others are internationally known for specific designs that incorporate color-such as Missoni's vibrant patterns. While these colors may be well-recognized symbols of specific brands, and thus deserving of trademark protection, designers rely on a broad and unrestricted array of colors in order to continue conjuring up the latest trends for each new season. Due to these often-competing interests inherent to the industry, fashion designers seeking protection for their single-color trademarks or their identifying use of colors in a design encounter significant challenges.
The Supreme Court, echoing Congress's intent to define trademark broadly, denied a per se exclusion to the protection of single-color trademarks,1 but perhaps the fashion industry's fundamental dependence on color renders the protection of single-color marks particularly problematic. This is the issue at the heart of the recent Christian Louboutin, S.A. v. Yves Saint Laurent America, Inc. litigation, in which the Second Circuit held that designer Christian Louboutin's "Red Sole Mark" constitutes a valid trademark, but only when the red on the sole is in contrast to the remainder of the shoe.2 This partial victory for the plaintiff-designer leaves in its wake unresolved questions about single-color fashion marks and the potential for increased intellectual property protection for the fashion industry in general.
For better or for worse, fashion designers and manufacturers are limited in their menu of intellectual property options. Professor Susan Scafidi, advocating for heightened intellectual property protection for fashion design, highlights the ever-increasing challenges faced by the industry.3 Advancements in technology and global economic shifts, which facilitate increased production of high-quality counterfeit goods, should be met with increased protection for designers.4 Permitting protection of fashion marks through a more flexible trademark analysis is a small step toward remedying the dearth of intellectual property protection.
This Note argues that single-color marks and related product designs that identify fashion brands should be granted trademark or trade dress protection, despite serving simultaneous aesthetic and source-identifying functions. Part II outlines the basic requirements of trademark and trade dress law (distinctiveness and nonfunctionality), and details the current protection afforded to color marks and fashion-product features. Part III looks at the recent Louboutin decisions from the Southern District of New York and the Second Circuit, and then analyzes the possibility of protecting single-color fashion marks, such as Louboutin's Red Sole Mark. Such analysis involves a review of the arguments and policies supporting such protection, as well as the doctrine of functionality that dangerously cuts against it. Part IV offers a solution that seeks to sufficiently preserve fashion's necessary foundations of creativity and free competition while still incentivizing the creation of successful marks such as Louboutin's Red Sole Mark. Limiting the scope of the trademark is essential to this solution and to the survival of a single-color mark in the face of the functionality doctrine. Lastly, the solution includes a relaxed aesthetic functionality framework, one that properly balances a mark's aesthetic appeal and source-identifying functions.
II. WHAT'S "IN": A LOOK AT CURRENT TRADEMARK LAW
Fashion is indisputably a "big business";5 estimated annual revenues for the industry total $350 billion domestically and $862 billion worldwide.6 These numbers reveal that most consumers interact with the industry on an almost daily basis. …