Secondary Meaning: Color Marks
The proof of secondary meaning courts credit for color marks in fashion after Louboutin v. YSL — from LVL XIII's framework to Cardinal Motors.
Secondary Meaning for Color Marks in Fashion: The Proof Second Circuit Courts Credit After Louboutin
A record of consumer recognition, not a categorical rule, decided Christian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc., 696 F.3d 206 (2d Cir. 2012). The panel refused to adopt a per se rule that a single color can never serve as a trademark in fashion, and the red lacquered outsole emerged with secondary meaning as a distinctive symbol identifying the Louboutin brand. The proof that carried the day was concrete: extensive evidence of advertising expenditures, media coverage, and sales success, Louboutin's own consumer surveys, and record findings that the "flash of a red sole" had become instantly recognizable, to "those in the know," as Louboutin's handiwork.
The same record set the mark's boundary. Because consumer recognition attached to the contrast between the red sole and the shoe's upper, protection under Section 37 of the Lanham Act reached only contrasting uses — leaving YSL's monochromatic red shoe outside it. Six factors govern the inquiry: advertising expenditures, consumer studies linking the mark to a source, unsolicited media coverage, sales success, attempts to plagiarize, and length and exclusivity of use.
A metallic toe plate on a sneaker fared worse under that framework. LVL XIII Brands, Inc. v. Louis Vuitton Malletier SA, No. 16-3488-cv (2d Cir. 2017) affirmed summary judgment against the claimed design mark: the plate was "merely a rectangle" — a commonplace product-design feature, not inherently distinctive — and the record fell short on secondary meaning. The affirmed opinion, LVL XIII Brands, Inc. v. Louis Vuitton Malletier S.A., 209 F. Supp. 3d 612 (S.D.N.Y. 2016), catalogs the proof that fails. Advertising that "merely pictures the claimed trade dress and does nothing to emphasize it or call attention to it" counts for little; promotional materials displaying the design only alongside word marks add nothing; roughly eight months of use is "far too brief"; and pervasive third-party use of similar toe plates defeats exclusivity. Consumer surveys stand apart as "the most persuasive evidence of secondary meaning" because they supply direct evidence of consumer association.
Pleading-stage scrutiny runs just as deep. A vague assertion that the claimed dress appeared on "best-selling styles" could not show sales success, and copying allegations that merely restated the infringement claim in conclusory form fared no better, so dismissal of the fashion trade-dress claim was affirmed in APP Grp. (Canada) Inc. v. Rudsak USA Inc., No. 22-1965 (2d Cir. 2024). Photographs did not cure the defects: a visual representation does not excuse the burden of pointing to the elements and features that distinguish the dress.
Cardinal Motors, Inc. v. H&H Sports Prot. USA Inc., 128 F.4th 112 (2d Cir. 2025) then clarified the threshold. Articulating the trade dress precisely — describing the specific combination of components, including colors — is a requirement independent of distinctiveness, so a complaint that pins down its features cannot be dismissed merely because those features may prove non-distinctive. Precision secures the pleading, not the claim: a product-design plaintiff "must always plead — and eventually prove — acquired distinctiveness."
The through-line for a fashion color mark: define the color and its placement with precision, then marshal surveys, advertising that directs consumers to the color as a source identifier rather than merely depicting it, unsolicited media coverage, sales tied to the claimed feature, and long, exclusive use. Louboutin proves that even strong evidence earns protection only as far as recognition reaches; LVL XIII and Rudsak confirm that generalized advertising spend, brief or non-exclusive use, and conclusory copying allegations will not carry the burden.