Colors are everywhere. No one owns colors, yet color itself can obtain trademark protection under certain circumstances.
Color is visual, decorative, aesthetic. It also communicates information, such as the red of traffic signs or traffic light green. Color in trademarks can communicate the origin of goods, and in the U.S.A. a single color may be eligible for a special trademark: a color mark.
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Brand colors
The color of a brand is not the same as a color mark. Brands have colors that identify them and constitute a vital element of their trademark.
Many brands have a TM (no registration required) or ® (which requires a federal trademark registration in the U.S.) on their image. However, it almost always means that the trademark protects the brand image or design, but not the color as separate from the logo.
Color marks, on the other hand, consist of only one or more colors used on particular objects.
Examples of color trademark
A well-known example is robin egg blue or Tiffany Blue® for jewelry boxes by Tiffany.
The trademark means that to avoid confusion, other jewelers cannot use the same color of boxes. Other examples are the red soles of high-heels dress shoes, where the rest of the shoe is not red by Louboutin; brown for parcel delivery trucks and uniforms by UPS; canary yellow for 3M sticky notes; magenta for T-Mobile; and more.
In these examples, brands “own” a color in connection to particular goods or services.
U.S. color marks
In the U.S., trademarks are defined as “any word, name, symbol, or device, or any combination thereof” that is used (or going to be used) in commerce to identify and distinguish goods or services from the goods or services of other sources.
The definition of a trademark in the Lanham Act does not include a direct reference to colors. For many years, single colors did not qualify for trademark protection, but this has changed.
The change has started with the 1985 decision on Owens-Corning pink insulation. Later, in the Supreme Court’s 1995 Qualitex Co. v. Jacobson Products Co. decision, the court ruled that the definition of a mark can include color.
Therefore, color can identify a brand and obtain trademark protection as part of a product, package, or service if it meets specific requirements.
Requirements to obtain a color mark
To get trademark protection, a color should:
(1) Identify or distinguish specific goods or services.
(2) Not be functional.
(3) Have a “secondary meaning” – a color can obtain trademark protection only in connection with a specific good or service if there is proof it has acquired distinctiveness.
Whereas the two first requirements apply to every trademark, the last one does not.
The color mark should identify specific goods
Color marks should distinguish certain goods in the eyes of the public, like any other trademark.
The color mark is non-functional
A color mark cannot obtain trademark protection if it is essential to the production of the goods or serves a utilitarian function. Having functionality in this sense means the color is vital or generic to the good or service.
For example, red for stop signs or green for garden equipment. It cannot put competitors at a disadvantage in terms of cost or quality, such as a color that is more economical to manufacture.
Functionality also refers to aesthetic functionality that affects competition. In this sense, the mark should not put competitors at a disadvantage that occurs regardless of reputation.
If the color indicates a characteristic of the good or service, such as its strength or size, the color mark may be denied. For example, color can have a functional purpose in medication and help avoid patient confusion (Shire U.S., Inc. v. Barr Labs., Inc., 329 F.3d 348 (3rd Cir. 2003)).
The color black was found functional for floral packaging because of a need by competitors to use black in connection with floral arrangement and flowers to communicate a sentiment or occasion, such as bereavement (re Florists’ Transworld Delivery Inc., 106 USPQ2d 1784, 1791 (TTAB 2013)).
Another example is the color gold for bookbinding and its aesthetic functionality in making a product more desirable (Publ’ns Int’l Ltd. v. Landoll, 164 F.3d 337 (7th Cir. 1998)).
In these cases, intellectual property law cannot protect color.
Secondary meaning
“Secondary meaning” is acquired when the mark has distinctiveness and recognition. It means that the purchasing public sees it as a feature used to identify and distinguish the source of the product.
In other words, the applicant must prove that the use of the color on a good or service over a period of time has made consumers associate the color with a specific source, and not the product itself.
It is easier to establish secondary meaning if the colors are not already used within a market, or if the use of the color is unusual. Color combinations can be easier to register as they may be less functional.
Courts established that proof of “secondary meaning” can usually be shown through facts involving the following factors:
(1) Advertising expenditures involving the color mark
(2) consumer recognition in surveys linking the mark to the source
(3) Unsolicited media coverage
(4) Sales
(5) Length and exclusivity of use
For example, Louboutin sued YSL for infringing on its red sole trademark.
The court found that Louboutin’s red lacquered sole in women’s high-heeled shoes had acquired secondary meaning as a distinctive symbol in “uses in which the red outsole contrasts with the color of the remainder of the shoe.” (Christian Louboutin S.A. v. Yves Saint Laurent America Inc., No. 11-3303 (2d Cir. 2012)).
Defining the color mark
A color-only mark registration must demonstrate that the color is not functional and has acquired distinctiveness through “secondary meaning”.
For registration with the USPTO, brand owners need to also define the specific representation and specific goods. For this purpose, a drawing for a color mark should also include a statement naming the color, where the color appears, and how it is used on the mark.
To define the shade of a color mark, it is usually best to use a definite system such as Pantone Matching System. Specific shades help brand owners to verify the correct use of the color mark.
It also helps avoid confusion. With a system, brand owners can define not only the shade but how many shades next to the color they want to protect.
Wiser Market – online IP rights protection
Color marks are the exception rather than the rule. In fact, a specific color can limit the scope of IP protection.
In most trademarks, owners have rights to exclusive use in any color, not just one exact color. However, in some cases, color is vital to the mark because it makes a good or service more distinctive, and the brand wishes to stop others from using it.
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WiserTip: File a trademark application even before the mark has acquired distinctiveness. The USPTO may put the mark on the Supplemental Register, until it achieves secondary meaning for the Principal Register.
