Written By: Tabina Haider
In our ever-changing society, the fashion industry has found ways to not only keep up with change, but also facilitate it. High-profile designers, such as Gucci, Christian Louboutin, Yves Saint Laurent, and many others have created unique designs with source identifiers. A source identifier is a way for consumers to know which brand is responsible for the product. [1] Some examples of source identifiers are Gucci’s two “G’s,” Yves Saint Laurent’s “YSL” design, and Christian Louboutin’s signature red bottom shoe soles. However, there has been much controversy as to whether these designs serve exclusively as source identifiers or whether they are an aesthetic function.
There has been countless litigation involving aesthetic functionality. If a product feature is deemed functional in any way, it cannot serve as a trademark. [2] In contrast to utilitarian functionality, aesthetic functionality discusses how the look of the product feature serves a functional purpose. [3] Courts have struggled with the application of the doctrine, resulting in issued opinions which define, dispute, and contradict it.
Christian Louboutin red bottom shoe soles provide a great example. Is this design a source identifier or is there an aesthetically functional purpose? When YSL tried to make an all-red shoe, including the soles, Louboutin filed for trademark infringement. [4] YSL claimed having a red sole was functional because it served the function of creating a monochromatic shoe. [5] Even though Louboutin has a valid trademark for the red sole, it is not aesthetically functional because it is not necessary for the sole to be red. The court held it was necessary for the shoe sole to be red in order for YSL to achieve their desired monochromatic shoe. [6] Therefore, Louboutin lost its trademark rights for the red sole in monochromatic red shoes. [7]
Another example involves Glossier’s pink bubble wrap-linked zip-lock pouches which are used to market and sell its cosmetics. Every purchased product is packaged in this signature pouch. Glossier applied for a trademark to register the pink bubble wrap-linked zip-lock pouch, and the United States Patent and Trademark Office (“USPTO”) rejected the application due to the functional design of the packaging. [8] Glossier responded by asserting the bubble wrap is not a feature of the trademark, and it only sought rights in the specific pink color used for the packaging. [9] Because consumers associate the pink color of the bubble wrap and zip-lock bag combination with Glossier products, Glossier claims it can successfully obtain a trademark. [10] The USPTO is currently reviewing the Glossier case. [11]
The Ninth Circuit is expected to clarify the doctrine soon given the doctrine’s controversial and varying application on a case by case basis. [12] Clarity of the doctrine will be integral for companies owning rights to their own designs, strengthening the protections trademarks provide to fashion designers.
[1] it law wiki, https://itlaw.wikia.org/wiki/Source_identifier [https://perma.cc/X7RL-JQYJ].
[2] Qualitex v. Jacobson Products Co., Inc., 514 U.S. 159, 165 (1995).
[3] Christian Louboutin S.A. v. Yves Saint Laurent America Holdings, Inc., 656 F.3d 206, 219 (2d Cir. 2012).
[4] Id.
[5] Id.
[6] Id.
[7] Id.
[8] Forget a Logo, Glossier Says that Consumers Know Pink Pouches are Indicators of its Brand, THE FASHION LAW (January 28, 2020), https://www.thefashionlaw.com/home/in-new-trademark-filing-glossier-says-that-consumers-know-pink-pouches-are-indicators-of-its-brand [https://perma.cc/WK2X-PZTL].
[9] Id.
[10] Id.
[11] Id.
[12] David Bernstein, Kathryn Saba, & Emily R. Hush, Ninth Circuit Set to Clarify Aesthetic Functionality Doctrine, IP WATCH DOG (January 17, 2020), https://www.ipwatchdog.com/2020/01/17/ninth-circuit-set-clarify-aesthetic-functionality-doctrine/id=117980/ [https://perma.cc/4B4Y-JLN4].
