Are Entire Portions of the Color Palette Trademark-Eligible?

In a November 9, 2012, article in The Legal, "Right ‘Pop’ of Color Can Be a Legally Protected Trademark," we discussed the case of fashion industry powerhouses Christian Louboutin, Christian Louboutin S.A. and Christian Louboutin LLC (Louboutin) and Yves Saint Laurent America Holding Inc., Yves Saint Laurent S.A.S. and Yves Saint Laurent America Inc. (YSL) doing battle over the color of soles on high fashion shoes. Louboutin sued YSL in a New York federal district court for trademark infringement. Specifically, Louboutin was trying to prevent YSL from selling a red monochrome shoe with a red outsole, which it deemed infringed Louboutin’s red sole mark, in Louboutin S.A. v. Yves Saint Laurent America, 778 F. Supp. 2d 445 (S.D.N.Y. 2011).

Whether and when color can serve as a trademark has been a long-debated question, and as the debate continues, the answers continue to be inconsistent. Much of the debate still focuses on concerns about removing entire portions of the color palette from the public. The issue of color as a trademark was recently addressed in the medical industry in a case decided by the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office on the final day of 2012. (See In re Cook Medical Technologies LLC, 105 U.S.P.Q.2d 1377, 1378 (TTAB 2012).)