Trademarks and service marks identify and distinguish goods or services sold by one person or business from those of another. They are a primary component of marketing strategies and advertising campaigns to establish and strengthen their owner’s brands. In some instances, an owner may use color so regularly and consistently when establishing a brand that it may assert trademark rights to a particular color, either as part of a claimed design or even in the color itself.
Color as an element of design marks. Color is most commonly claimed as an element of a more comprehensive design, such as a company’s logo or stylized lettering design. For example, color is a claimed element of marks owned by the Hershey company for maroon-brown candy wrappers, and by the McDonald’s Corporation for its yellow-and-red “Golden Arches” logo. Applicants applying to register such “design plus words or letters” marks must expressly claim the color as part of the mark. Otherwise, the Trademark Office presumes that the mark encompasses the design in any color, as well as in black-and-white. Unless a particular color is already an essential component of the mark, it makes sense to apply first for a broader, non-color registration. But claiming color as an element, even in a subsequent application, can help establish rights in the color itself and prevent or discourage competitors from using the same color with a different design.
Stand-alone color marks. Occasionally, a color may be used so regularly and consistently with a particular good or service that over time it acquires a “secondary meaning” in the minds of consumers. That is, the color itself becomes as an indicator of the source of that product. Well-known examples of this include pink for Owens Corning® insulation products, red for the outsoles of Christian Louboutin® shoes, and robin’s-egg blue for Tiffany and Company® jewelry and related products. Unlike marks in which color is claimed as an element of a design, stand-alone color marks are not inherently distinctive when used on a product itself, so an applicant must establish secondary meaning for such color marks. This does not necessarily apply to product packaging, however, as recent caselaw has established that color marks can be inherently distinctive when used on product packaging, depending on the specific color design in question.
The Trademark Office will not register stand-alone color marks that serve a functional purpose (e.g., a red filter on a safety flashlight), or that would potentially place the applicant’s competitors at a disadvantage by affecting the cost or quality of competing products. Even where an applicant succeeds in registering a stand-alone color mark, it extends only to the specific goods or services in the specific classes(s) claimed in the registration and no further. For example, the famous Louboutin® red mark was held to cover only the outsole of a shoe that contrasted with the rest of the shoe, and thus a competitor’s monochromatic red-colored shoe did not infringe the mark.
As with all trademarks, owners of color marks are responsible for monitoring the activities of others to ensure that their color marks are not being used improperly or without permission, as well as to ensure that others’ marks are not being used in ways that are likely to create customer confusion with their goods or services.
Using colors consistently to identify and designate the source of products or services can significantly enhance a brand’s recognition and power, and may be a valuable component of a comprehensive trademark portfolio.
Raphael Bellum – Advocates for Innovation – Advisors on Invention℠
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