When Colors Act as a Trademark

Trademarks are defined by the Lanham Act as “any word, name, symbol, or device, or any combination thereof” that is used to “identify and distinguish” one’s goods or services from those of other sources. However, colors are not included in the definition of trademarks and were initially prohibited from gaining trademark protection. In 1985, Owens-Corning became the first company to successfully trademark a color. Ten years later, Qualitex went up to the Supreme Court and established a right to trademark their signature color as it was determined that the colors identified their brand in the minds of consumers.

A color or combination of colors can qualify as a trademark as a part of a package, service, or product provided they (a) have acquired distinctiveness (“secondary meaning”), and (b) do not have a utilitarian or functional purpose.

What is “Secondary Meaning”?

“Secondary meaning” is when the mark being used (in this case, the color) has become distinctive as applied to the goods or services.  In other words, consumers identify and recognize the source of the goods (the trademark applicant) based on seeing the mark.  Distinctiveness is best demonstrated by surveys reflecting a large pool of consumers associating the particular color/combination with a certain product or service. See, Trademark Act, §2(f), Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1580, 6 USPQ2d 1001, 1007 (Fed. Cir. 1988), In re Capital Formation Counselors, Inc., 219 USPQ 916, 917 n.2 (TTAB 1983).

Why Is a Functional Purpose Inapplicable?

The courts have stated that a mark that is functional is not granted protection under the trademark law if such mark affects the quality or cost of the product or service. The question under consideration is whether denying the competitor use of the color feature would put them in a position of competitive disadvantage. If a color trademark highlights a characteristic like strength, size, or capacity of the product or service, then the color trademark would not qualify for protection. Example: black colored bottles used to sell photosensitive medicines to avoid light exposure cannot be registered since the color (black) serves a utilitarian purpose of blocking light.

How is the Color Defined?

The courts prefer to adopt scientific methods to determine and define colors. One such system used is the Pantone Matching System which is an ink matching technique currently consisting of 1,867 colors. This system is used to define the particular shade of a color to be trademarked. One can trademark a range of shades as well.  For example you can trademark five shades on either side of the focus color. Such systems help maintain consistency amongst the manufacturers and are also useful to courts in assessing trademark infringement.

Why Should You Trademark Color?

Generally, for goods and services where the logo or mark is unidentifiable without the use of a distinct color, it is essential to trademark such color. Trademarking such color can raise brand awareness and make a product or service more distinguishable, in turn increasing the value of a product or service in the market. One such example is the red sole of Louboutin’s high heel shoes.

Filing Your Trademark Registration Application

You are not required by the USPTO to wait until you begin using a particular color for your product or service to register the color but you will need to file an “Intent to Use” Application if that is the case (and further filings, including a “statement of use” after actually using the mark in commerce). Additionally, you can file the trademark without the color having acquired distinctiveness. If USPTO determines your mark to have the potential to become distinctive on consistent use, then your mark is registered on the “Supplemental Register”. Once your mark has achieved distinctiveness, which is presumed after five years of continuous use, you can reapply to register the mark on the “Principal Register” which is reserved for distinctive marks only.

Typically, a successful trademark registration requires the applicant to prove that the color:

• Has acquired “secondary meaning” or in other words, is distinct enough to serve as an identification tool for the product or service;
• Does not have any functional or utilitarian purpose; and
• Does not put competitors in a weak position by affecting the quality or cost of the product or service.

Authors: Krishna Parekh and Brandon Anand