Colors: Can they be Trademarked?

• Aug 17 2018
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• Category: News

Colors hold more power than we often may assign to them. Whether on packaging of food in the supermarket, or the bottom of a shoe, color undeniably contributes greatly to brand awareness and recognition. It is widely known that Tiffany jewelry has its own special color blue, Barbie is associated with a specific shade of pink, and that the luxury status Christian Louboutin shoes has been planted firmly on the bottom of its red soles. With so much of company financials riding on brand-associated colors, can they be protected?  

The Lanham Act and Color Trademarks

The Lanham Act defines trademarks as “any word, name, symbol, or device, or any combination thereof” that is used to “identify and distinguish” one set of goods or services from other sources. Although colors are not included within that definition and were traditionally barred from trademark protection, there exist certain exceptions. Since 1995 colors and color combinations can be trademarked as part of a product or service so long as they, like any other trademark:

1. Serve a source identification function; and
2. Do not serve a purely decorative or utilitarian purpose.

A few other examples of protected marks include:

1. Red knobs on cooking appliances (Wolf);
2. Brown for parcel delivery trucks and uniforms (UPS);
3. Magenta for telecommunications services (T-Mobile); and
4. Orange for scissor handles (Fiskars).

Secondary Meaning Requirement

In order for a color to be marked, it requires that there be proof of a “secondary meaning.” This means that a color can only be trademarked in connection with a good or service if, through the use of the color over time, the public has come to associate that color with a particular brand.

Secondary meaning can be extremely difficult to prove, unless the color or color combination is not widely used for other goods and services, is unusual, or is elaborate. One of the best ways to demonstrate this is by providing a high volume of advertising in which the color mark has been used.

May Not Act as a Function

Additionally, a color mark may not serve as a function of the good or service. Trademark protection may be denied if it’s a characteristic of the good or service in question, such as size, capacity, or strength.

The Pantone Matching System and other scientific processes for distinguishing shades of colors is often used by manufacturers and advertisers to maintain the correct and consistent use of a color, and by courts to evaluate trademark infringement.

The Pros and Cons of Protecting Your Color

There are certainly pros and cons to applying for trademark protection. On the one hand, it is better not to claim protection for a particular color unless the service or good is essential to, or serves as the distinguishing element of, the mark. If this is not the case, one may actually be at a disadvantage by limiting his or her protection to that one specific color, and allowing for others to use similar colors for competing products. However, on the other hand, for goods or services, which would be unidentifiable without a specific color, (e.g. Christian Louboutin shoes), using and trademarking that color may be quite wise. Trademark applications can be filed with the U.S. Patent and Trademark Office. To learn more, contact Carter, DeLuca, Farrell & Schmidt at 631-501-5700.