Trumps Red Soled Sneakers
In the world of shoes, trade dress protection can be a serious matter. Before releasing a new shoe design it often is wise to involve your trademark attorney and discuss your new product release, especially in the highly competative area of fashion and design. Recently, Trump unveiled his “Never Surrender” gold colored high-top sneaker line with red soles at Sneaker Con. While it is unclear if he has a trademark attorney, by Saturday night all 1000 sneakers were sold at the listed price of $399. Of note, the sneakers were not designed, manufactured, distributed or sold by Trump or the Trump Organization. Instead, Trump licensed to 45Footwear, LLC the rights to the Trump name, image and likeness under the license agreeement. This is not uncommon, as Trump has licensed his name to a wide variety of items including board games, clothes, colleges, cologne, cookies, donuts, flags, golf balls, hats, mattresses, potted plants, resorts, socks, steaks, speakers, ties, trading cards, underwear, vitamins, vodka and skyscrapers.
Fashion Icon’s Iconic Trade Dress
Trump’s Never Surrender high-tops with their red soles, may have unwittingly incorporated the iconic red-heeled soles of luxury shoe maker Christian Louboutin. Since 1992, Mr. Louboutin, has been making red-heeled shoes. Since then, his shoes have grown in popularity, appearing regularly on various celebrities and fashion icons. As a result of his significant efforts in promoting and protecting his signature red sole, it has become closely associated with Mr. Louboutin. According to Mr. Louboutin, his red-soled shoes, red is more than a color. It’s an attitude. He has turned his trademark shade into a internationally recognized symbol of luxury and so much more. Every step in a pair of Louboutins is a step towards passion, power, sensuality, love, vitality, and a certain stylish insouciance à la française. Innovative, audacious, and utterly unique, his “red bottom” shoes have evolved into a permanent fixture of pop-culture celebrated countless times over in the worlds of cinema, television, and music. Even more than that, they are the perfect tip of the proverbial hat to the designer’s uncanny ability to fuse art with savoir-faire, craftsmanship with personality, quality with charisma. As a result of Louboutin’s marketing efforts, the “flash of a red sole” is “instantly” recognizable, to “those in the know,” as referring to Mr. Louboutin’s handiwork. As a result of the success of his iconic red-heeled shoes, Mr. Louboutin has filed more than 190 trademarks includingt rademarks to cover his distinctive red-heeled soles in the United States, Mexico, the Phillippines, New Zealand, Australia and Morocco. With the recent release of the Never Surrender high-tops, many accuse the witless barker of stepping onto Mr. Louboutin’s toes, literally.
Trade Dress Protection under the Lahnam Act
Under the Lanham Act, 15 U.S.C. § 1051 et seq., a trademark owner can bring a lawsuit against another for trademark infringement, counterfeiting, false advertising, false designation of origin, unfair competition and trademark dilution. Under the Lanham Act, extends to trade dress protection which covers the design and shape of the product or housing for products or services. In indcludes the product configuration, the design and shape of the product. Trade Dresses can be registered or unregistered. In addition, the Lanham Act allows a trademark owner to seek an injunction against those whose violation may cause irrepable injury.
To sue someone for infringement of your trade dress, you must be able to articulate and prove that your trade dress is inherently distinctive, or has acquired secondary meaning, and that the later user’s use is likely to cause consumer confusion with your products. In order to show secondary meaning in a trade dress protection case, you will need to demonstrate that in the mind of the consuming public, the primary significance of the product feature is to identify the source of the product. Some factors which may help include amount of advertising expenses, consumer studies that connect the mark to its source, unsolicited media coverage of a product, sales success, attempts to copy the mark, and the length of exclusive use of the mark. A trade dress owner can also assert a claim of dilution by proving that the claimed trade dress, the red sole in this case, is not functional and is famous.
Trade Dress Protection of a Single Color
After the passage of the Lanham Act, which indicated in broad terms what is eligible for trademark and trade dress protection. In interpreting cases based on the Lanham Act, courts gradually agreed that color alone can be the subject of trademark protection and as a result, owners of color-related marks have enjoyed protection. In some cases the color of insulation has been protected. In others, a square red label on an automobile trailer window has recevied trademark protection. Typically, a product which has a distinctive color, even if a single color, may be entitled to trademark protection if the use of the color acquires secondary meaning and consumers of the products immediately recognized that color, as used on the goods or packaging, as identify the source or producer of the products. In order for a trademark to be protectable, the mark must be “distinctive” and not “generic.” A mark is said to be “inherently” distinctive if its intrinsic nature serves to identify a particular source. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992).
Even a mark that is not inherently distinctive may nonetheless “acquire” distinctiveness by developing “secondary meaning” in the public mind. As the U.S. Supreme Court indicated in Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 162 (1995) (“Qualitex”), over time, customers may come to treat a particular color on a product or its packaging (say, a color that in context seems unusual, such as pink on a firm’s insulating material or red on the head of a large industrial bolt) as signifying a brand. And, if so, that color would have come to identify and distinguish the goods—i.e., “to indicate” their “source”—much in the way that descriptive words on a product can come to indicate a product’s origin. According to Qualitex, a case involving a claim for trade dress protection for the color of a dry-cleaning press pad, color alone can be protected as a trademark if it does not serve any other significant function. The functionality of a mark is analyzed under two lenses: (1) traditional “utilitarian” functionality, which looks at whether the mark is (i) essential to the use or purpose of the article, or if it (ii) “affects the cost or quality of the article; and “aesthetic” functionality, where protection of the mark significantly undermines competitors’ ability to compete in the relevant market.
Louboutin Three-Part Aesthetic Functionality Test
Under the Qualtex analysis, a defense to trade dress protection involving a color is that the color is functional. Aspects of a product which are functional generally cannot serve as a trademark. A trademark is functional if it is essential to the use of the article or if it affects the cost of the article. Additionally, if the aesthetic design of the product is the mark itself, that mark can be deemed functional if giving the mark holder the exclusive right would create a significant disadvantage for competitors. As an example, the color used on the packaging of the antibiotic ointment NEOSPORIN was held to not be functional when whether coloring the package green/yellow would not significantly hinder competition for other antibiotic ointments. There must be proof that the inability to use gold color on a package, for example, would put competitors at a disadvantage.
Another form of function, in packaging, is also aesthetic functionality, which is also an affirmative defense. When the aesthetic design of a product is itself the mark for which protection is sought, the mark is often deemed functional if giving the markholder the right to use it exclusively would put competitors at a significant non-reputation-related disadvantage. This is true even when there is no indication that the mark has any bearing on the use or purpose of the product or its cost or quality. Under the Louboutin test, to determine whether a design feature is non-functional and thus entitlted to trademark protection, courts will look to whether the design feature is:
(1) Essential to the use or purpose of the product;
(2) Affects the cost or quality of the product; and
(3) Has a significant effect on competition.
Trump may need to surrender his Never Surrender shoes if Christian Louboutin challenges his recent high-top shoes. While we can only an speculate about various evidence which could be used to support either party. For example, it may be that the color red for the soles is not essential to the use for high-tops and that red colored soles does not affect the cost or quality of Trump’s shoes. However, the use of red on the sole for Trump could be argued as an attempt to use red, white and blue colors to be create an American theme. There are a lot of arguments that could be made. However, in the end, this is a great example of why it is helpful to contact a trademark attorney to discuss your new products in advance of your product release.