Color as a Trademark

October 28, 2015

Trademarks and service marks act as source identifiers: they act as a vessel of positive and negative associations to tell the consuming public what to expect when exposed to offerings in the marketplace. But trademarks are not only words, like

Color can also function as a source identifier. For example, pink is a distinctive feature of Owens-Corning fiberglass insulation. Green is a consistent color associated with John Deere machinery.

Not all colors qualify for trademark protection, however. A color, in order for it to function as an effective and registrable trademark, must meet two tests. First, it must have acquired secondary meaning associating the specific color with the goods or services of a particular source. Second, the color must not be functional in the operation of the goods or services.

The role of color as a trademark has not always been as clear cut as it is now. The Supreme Court of the United States resolved the confusion twenty years ago in Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995). Before Qualitex, Federal courts had disagreed whether color alone could be accorded protection. The high court settled the issue, unanimously holding that “there is no rule absolutely barring the use of color alone.” Id. at 160.

Qualitex involved a unique shade of green-gold that Qualitex Co. had been using on dry cleaning pads since the 1950s. After a competitor began selling competing products using the same shade of green-gold, Qualitex sued for trademark infringement, having registered the color for dry cleaning pads with the U.S. Trademark Office.

The Supreme Court concluded that “a mark,” defined as any “word, name, symbol or device” had certainly come to include color. 15 U.S.C. § 1052(f). The Court then established the requirements for according trademark protection to color alone. As with any mark, a color mark must first and foremost be capable of identifying and distinguishing goods from those manufactured or sold by others. It must be capable of indicating the source of those goods, even if the source is unknown. 15 U.S.C. § 1127.

The Court analogized color to the category of “descriptive marks,” which are never inherently capable of indicating source. The Court recognized, however, that color, like descriptive marks, could come to identify, distinguish, and indicate the good’s source through “secondary meaning.” “Secondary meaning,” the Court explained, is acquired when, “in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.” Qualitex, 514 U.S. at 163.

As a second requirement, the Court allowed protection of color marks only for those that—like all trademarks—are not functional. “The functionality doctrine,” it explained, “prevents trademark law . . . from . . . inhibiting legitimate competition by allowing a producer to control a useful product feature.” Id. at 164. The Supreme Court reasserted its established functionality standard, stating that “a product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.” Id. at 165.

Functionality has proven to be a more serious obstacle to protection than “secondary meaning.” For example, in Publications Int’l Ltd. v. Landoll, Inc., 164 F.3d 337 (7th Cir. 1998), the Court of Appeals for the Seventh Circuit found that the use of gold with bookbinding served a functional purpose.

The Trademark Manual of Examining Procedure [“TMEP”], which is the manual used by the U.S. Trademark Office to review applications for trademark registration, starts with the notion that color marks are never inherently distinctive, always requiring a showing of acquired distinctiveness to be registered on the Principal Register. The TMEP also demands that a color mark be non-functional. There are, however, additional requirements unique to the application and examination process. The PTO further demands that color be used in conjunction with particular goods or services “provid[e] notice [to the public] of the nature of the mark sought to be registered.” TMEP § 1202.05(d). The PTO also requires that an application for a color mark include a separate statement describing where the color appears and how it is used on the mark. These rules are applied rigorously. See e.g. In Re Thrifty Inc., 274 F.3d 1349 (Fed. Cir. 2001)

So, when considering whether a color may potentially be protectable, it is important to keep the following questions in mind:

• Has the owner of the trademark used the color consistently in connection with specific design elements?
• Has the owner of the trademark made longstanding and exclusive use of the color in this way?
• Is the color likely to be linked with the product in the mind of consumers?

For more information about this or any trademark or IP issues, please contact Fred Frawley (afrawley@eatonpeabody.com).