In September, the Second Circuit issued a widely anticipated opinion regarding in Christian Louboutin S.A. v. Yves Saint Laurent America, Inc. The opinion has been summarized already by many trademark scholars. In short, the appeals court found that Louboutin has rights in a red sole when the remaining colors of the shoe are in contrast to the red sole. And as applied to the dispute with YSL, who’s shoe is monochromatic, the Second Circuit found that YSL was technically not using the Louboutin trademark and was not a mark confusingly similar to it, thus finding that a trademark infringement claim could not be sustained. (Though some have wondered why Louboutin wasn’t given the chance to show why the all red design may have caused actual confusion in the marketplace with their contrasting color design.). For a far better and more detailed summary, see Rebecca Tushent’s 43(B)log post.
However, two important matters remain in this case: (i) the proceeding has not actually been dismissed by the Court, and (ii) the Court’s opinion directs the registration to be limited: “We therefore instruct the Director of the Patent and Trade Office to limit the registration of the Red Sole Mark to only those situations in which the red lacquered outsole contrasts in color with the adjoining “upper” of the shoe.” 2nd Circuit at p. 30. The Louboutin registration has not been changed in any manner to date. However, since the case has not been dismissed, it might be expected that the USPTO would wait for finality, and to ensure that there are no further proceedings or appeals.
Regarding a dismissal by the Second Circuit, it seems the parties are entangled in a disagreement over the language of an order to withdraw all the other claims and to dismiss the proceeding. Specifically, they dispute whether the claims of Louboutin should be “dismissed” and “with prejudice.” Or whether the proceeding should be disposed of with some other language. The parties’ have each submitted several letters to the Court over the last few weeks addressing this matter. For details, see the public filings below, presented in reverse chronological order (most recent filing first).
As a result, the final chapter in this dispute may not have been written yet. And even after this dispute is over, important questions remain, such as: Will Louboutin seek to enforce its (modified) trademark against others? Does the Second Circuit opinion strengthen Louboutin’s claims against users of a red sole and contrasting colors?