United States Second Circuit

In a fashion designer's trademark infringement suit against another fashion house, the district court's denial of plaintiff's request for a preliminary injunction preventing defendant from marketing any shoes bearing outsoles in a shade of red identical to plaintiff's Red Sole Mark, or in any shade which so resembles the Red Sole Mark as to cause confusion among consumers, is: 1) reversed in part where the court's conclusion that a single color can never serve as a trademark in the fashion industry was based on an incorrect understanding of the doctrine of aesthetic functionality; and 2) affirmed as to the court's ruling that plaintiff's trademark has developed "secondary meaning" and is therefore a valid and enforceable trademark. The trademark is limited to uses in which the red outsole contrasts with the color of the remainder of the shoe, and as modified, plaintiff's trademark is entitled to protection. Because plaintiff sought to enjoin defendant from using a red sole as part of a monochrome red shoe, the district court's order is affirmed insofar as it declined to enjoin the use of red lacquered outsoles in all situations, and reversed insofar as it denied trademark protection to plaintiff's use of contrasting red lacquered outsoles.

Appellate Information

• Decided 09/05/2012
• Published 09/05/2012

Judges

• Cabranes

Court

• United States Second Circuit

Counsel