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Louboutin-YSL Encore: Designer Loses One More Battle for his Sole

By Robyn Hagan Cain on March 14, 2013 4:02 PM

Some of us suffered through law school with the hope of a designer-shoe-filled future serving as our light at the end of the tunnel. For us, the day Christian Louboutin sued Yves Saint Laurent for trademark infringement was the BEST. DAY. EVER.

But the Second Circuit’s decision in the Louboutin-YSL red-soled shoe showdown left a void in our lives. So it’s with great joy that we announce that Monsieur Louboutin was kind enough to return to the Second Circuit for an encore performance involving a court order in the case.

To give the order context, let’s review the facts leading up to the most recent installment in this stylish dispute.

In 2011, U.S. District Judge Victor Marrero ruled in Louboutin-YSL Round One that a color cannot be trademarked. And that sent the fashion world into a panic.

In September 2012, the well-heeled among us breathed a collective sigh of relief when the Second Circuit concluded that Judge Marrero's holding that a single color can never serve as a trademark in the fashion industry "is inconsistent with the Supreme Court's decision in Qualitex Co. v. Jacobson Products Co." The appellate court said that Louboutin's sole deserves trademark protection, but Yves St. Laurent didn't infringe that trademark with its monochromatic shoes.

The Second Circuit noted "Louboutin's trademark, consisting of a red, lacquered outsole on a high fashion woman's shoe, has acquired limited 'secondary meaning' as a distinctive symbol that identifies the Louboutin brand," but limited the trademark to uses in which "the red outsole contrasts with the color of the remainder of the shoe."

After the appellate court issued its ruling, the clerk of court issued a mandate directing the U.S. Patent and Trademark Office to "make appropriate entry upon that Office's records to reflect that [Louboutin's trademark] is limited to a red lacquered outsole on footwear that contrasts with the color of the adjoining ("upper") portion of the shoe." In January 2013, Louboutin filed a letter with the clerk of court requesting a modification of that mandate to make the language more precise.

While precision is great -- particularly in finely-crafted footwear -- the Second Circuit concluded that Louboutin "made no showing that any of the factors favor recall and modification of the mandate." Because the designer did not present the "exceptional circumstances" required to grant such a request, the court refused to modify the mandate.

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