A Bit of a Gray Area: Trademarking Colors

August 31, 2017

 

 

Many people are oftentimes surprised that a particular color can be trademarked. How can a company own an entire color, particularly one as common as red or blue? Well, companies can’t really own a color. They can simply claim a particular color in their specific marketplace. Does that sound any better? Maybe it would help to learn how a company comes to trademark a color. It’s not easy. It requires heavy marketing and a dedication to that color.

 

 

The Meaning of Secondary Meaning

 

In the landmark Qualitex case, the United States Supreme Court ruled that a color could be trademarked as long as it attains a “secondary meaning” and thus identifies the source of goods. What does “secondary meaning” mean? Think of the color brown. Now think of a package delivery company. Most, if not all, people immediately think of UPS. Everyone is used to seeing those brown trucks pull up in their driveway and deliver that eagerly awaited package. In the package delivery marketplace, brown isn’t just a color; it’s intertwined with UPS. A person can’t think of brown without thinking UPS. That’s secondary meaning. Secondary meaning is when customers strongly associate a color with a particular company in a certain marketplace.

 

But there are limitations, as there is with much of the law. A company can only claim a color in its marketplace. For example, UPS cannot stop a fashion company from using brown. UPS can only stop other package delivery companies such as FedEx from using brown.

 

 

Functionality and its Forms

 

Even if a company is claiming a color in its particular marketplace and even if the color has attained secondary meaning, this may not be enough. In Qualitex, the Supreme Court ruled that a color that is functional cannot be trademarked. A color 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.” In other words, if a company would be allowed exclusive use of that color, then it “would put competitors at a significant non-reputation-related disadvantage.”

 

Many courts have struggled to interpret this decision and for good reason. In its Qualitex decision, the Supreme Court mixed two kinds of recognized functionality: utilitarian and aesthetic.

 

Utilitarian functionality generally means any characteristic that serves a useful purpose. One example of this kind of functionality is seen in a trademark appeals case involving yellow and orange payphones. A company wanted to trademark the colors orange and yellow for its payphones but its registration was refused by the Examining Attorney. The Examining Attorney argued that the colors served a utilitarian function because orange and yellow are bright colors that made the phones more visible than ordinary black phones under any lighting and at a distance. Here, the useful purpose of orange and yellow is visibility. Thus, it would be unfair to not allow other payphone companies to use these bright colors in order to increase the phone’s visibility.

 

Aesthetic functionality is more concerned with putting competitors at a disadvantage. In one instance, a company tried to trademark the color black for marine outboard engines. While the color black served no utilitarian function and did not affect the cost of the engines, it did affect competition. Here, the court agreed with the Trademark Trial and Appeal Board’s opinion that the color black appeals more to customers because it matches better with more boat colors and because it makes the engine appear smaller. Therefore, the desirable color black served an aesthetic purpose that would disadvantage competitors in a market where consumers prefer black.

 

 

So what companies have passed these rigorous tests?

 

As mentioned earlier, UPS has successfully trademarked the color brown in the package delivery industry.

 

Tiffany & Co. trademarked “Tiffany Blue” for shopping bags and jewelry boxes.

 

Mattel has extended protection across many categories for “Barbie Pink.”

 

T-Mobile has claimed magenta for the cell phone company market.

 

Owens Corning was the first to trademark a color with its pink insulation.

 

Cadbury, the company responsible for those sweet Dairy Milk chocolate bars, occupies royal purple, though its reign has become less certain over the years.

 

The Wiffle Ball, Inc. has trademarked the color yellow for its familiar plastic baseball bats.

 

Qualitex, the main reason for all this attention to color marking, has its own trademark in the green-gold color for its dry cleaning press pads.

 

Louboutin made a fashion statement when it took the color red on shoe outsoles for itself.

 

 

The Risks and Rewards

 

These are just a handful of the many color marks and the world can expect more. Trademarking a color is becoming increasingly popular as companies see the benefit of taking a slice of the pie. But trademarking a color comes with a lot of work on the front and back end. Companies have dedicated many decades to creating a secondary meaning for a color so they can have a chance at registration.

 

Once registered, the work is not over. A company can spend millions of dollars and a hefty chunk of years defending its color in court. Besides that, a company must spend the manpower and advertising dollars to keep customers familiar enough with its color(s) and to scare competitors off from stealing the guarded color. For some businesses, the effort isn’t worth it. But for others, the effort reaps big rewards.