Designer Denied Say in Louboutin Mark Change

MANHATTAN (CN) - Christian Louboutin cannot interfere with the U.S. Patent Office's orders to limit the trademark for its signature red-soled pumps, the 2nd Circuit ruled.

Since 1992, Louboutin has painted the soles of his high heels with a high-gloss red lacquer.

He trademarked the look in 2008 and then filed suit in 2011 when competing fashion house Yves Saint Laurent released a line of monochrome women's shoes, including red shoes with red soles.

A federal judge in Manhattan ruled for YSL, holding that a single color cannot serve as a trademark in the fashion industry.

The 2nd Circuit concluded later, however, that Louboutin's red sole "has acquired limited 'secondary meaning' as a distinctive symbol that identifies the Louboutin brand."

Since the September 2012 holding limited trademark protection to shows that have non-matching red soles, YSL was allowed to continue peddling monochromatic red shoes with red soles.

The court clerk then directed the U.S. Patent and Trademark Office to "make appropriate entry upon that office's records to reflect that U.S. Trademark Registration No. 3,361,597, held by Christian Louboutin and dated January 1, 2008, 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 challenged the office's alleged intention "to amend the trademark by adopting the language of mandate verbatim."

He sought permission to modify the mandate with wording he felt would reflect his trademark more precisely.

The 2nd Circuit denied Louboutin's letter motion Friday.

"Our power to recall a mandate 'can be exercised only in extraordinary circumstances' and 'is one of last resort, to be held in reserve against grave, unforeseen contingencies,'" the unsigned opinion states.

The court identified four factors it considers when determining to recall its own mandate, such as when a previous decision conflicts with the "governing law" or if a "dispositive decision was pending in another court."

"Louboutin has made no showing that any of the factors" or the ""exceptional circumstances' required to grant such a request" exist, according to the ruling.

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