What do UPS, Tiffany and Co., and Owens Corning have in common? The mere sight of the color of their product (Pullman Brown, Robin’s Egg Blue, and Pink) brings to mind who they are without ever having to place a logo or word on their products. These marks demonstrate how real people shop for goods and services and how trademarks are about providing a potential consumer resources to identify the source of the goods and services they are purchasing – while preventing others from using those identifiers to create consumer confusion.
The leading case involving color as a trademark is Qualitex Co. V. Jacobson Prods. Co. (514 U.S. 159, 161, 163, 115 S. Ct. 1300, 131 L.Ed. 2d 248 (1995)), which noted that a color can sometimes serve as a trademark by itself “when that color has attained ‘secondary meaning’ and therefore identifies and distinguishes a particular brand (and thus indicates its ‘source’).” The Court went on to provide that if the color serves a “function” then it by definition is not protected by trademark law. Function is broken out into “utilitarian” and “aesthetic” functionality – this is largely a nod to the availability of other areas of intellectual property such as patents (dealing in realm of utility), and copyright (entwined with issues of aesthetics) which are designed for these uses. What is left is color used as a source identifier – clearly within the scope of trademarks.
Courts, however, recognize that such use is limited and has potential to be damaging to many industries if overused, and as a result have taken the position that color by itself is not inherently distinctive, and as a result most color-only marks will have had to acquire distinctiveness through actual use. This means that new users of a color, wishing to register color-only marks are limited to filing applications on the supplemental register until such time that they can show the mark has acquired distinctiveness.
Call 612-414-3113 to discuss how I can help you with your trademark and copyright related matters.