Tuesday, September 27, 2011

Color Me Successful

In 2008, Wisconsin-based Wolf Appliance, Inc.was granted a U.S. trademark registration for the red knobs used on its gas and electric cooking appliances since 2000. In early 2010, Wolf was successful in obtaining a preliminary injunction against competitor Viking Range Corporation for offering a “Red Knob Kit” as an accessory for its own cooking appliances (otherwise equipped with black knobs). In its defense, Viking brought a counterclaim to cancel Wolf’s red knob trademark registration. All claims and counterclaims in the action were voluntarily dismissed without prejudice in July 2010.

Also in 2008, but before the issuance of the Wolf trademark registration, Christian Louboutin obtained a U.S. trademark registration for lacquered red soles of footwear. Earlier this year, Louboutin brought suit against Yves Saint Laurent America, Inc. for infringement based on YSL’s offering of red-soled shoes. And like Viking’s defense in the Wolf case, YSL counterclaimed to have Louboutin’s trademark registration cancelled.

Unlike Wolf, Louboutin was not successful in obtaining a preliminary injunction against YSL. In denying the preliminary injunction, the judge in the Louboutin matter stated that Louboutin is unlikely to be able to prove that the red outsole is entitled to trademark protection. That same judge also indicated that he was willing to grant summary judgment cancelling the Louboutin registration, but agreed to hold off on that determination pending Louboutin’s appeal of the preliminary injunction refusal.

I think the judge in Louboutin is wrong and hope that Louboutin is successful in its appeal. Color has been considered protectable as a trademark since the 1995 U.S. Supreme Court decision in Qualitex Co. v. Jacobson Products Co., so long as the color has achieved “secondary meaning”—essentially the color is of primary significance to the public as a recognized feature of a product. Wolf and Louboutin each arbitrarily applied the color red to an otherwise generally ignored aspect of their respective products and then told customers to look for that unique feature. In both cases, the owners of the trademarks established what I believe is sufficient secondary meaning to support their trademark claims.

When my husband (the cook) announced that he had bought a new Wolf range (yet to be delivered), I gave him a blank stare until he explained that it was the stove with the red knobs. The light went on and I immediately knew he had chosen something of quality—or at least so I had learned through my subconscious attention to him, other kitchen fans, and advertising. I don’t own any Louboutin shoes, and likely never will, but recently, when watching a movie with my nieces, saw Jennifer Lopez wearing red-soled shoes and immediately questioned how (and why) a pet shop owner would spend that kind of money on a pair of shoes. In both cases, I immediately recognized products by their distinctive use of color. That is the essence of a good trademark.

But now, if Louboutin loses, and YSL is successful in cancelling the Louboutin “red sole” trademark registration, will Viking once again try to cancel Wolf’s “red knob” registration? (Remember that Viking voluntarily dismissed its cancellation counterclaim without prejudice, meaning Viking is free to re-institute the claim at any time). While the loss of Louboutin’s trademark rights would not affect me, I would sincerely hate to see red knobs on just any range and diminish my husband’s joy in possessing that immediately recognized kitchen appliance that signals the home of a serious cook.

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