Publications and Presentations
Laura Winston Published in New York Law Journal on Color Trademark Protection and Issues
Intellectual Property Practice Group Leader and Principal Laura J. Winston has been published in New York Law Journal with the article titled, “From Palette to Protection: When Does Color Function as a Trademark?” In the article, Laura discusses the legal complexities of using color as a trademark, illustrating with examples such as Mattel’s claim on pink for Barbie and UPS’s successful use of brown, highlighting the importance of distinctiveness, non-functionality and consumer recognition for a color to be entitled to protection as a trademark.
The full article can be found below and here.
From Palette to Protection: When Does Color Function as a Trademark?
While companies like UPS have successfully used color as a trademark, securing trademark protection for a color can be challenging. This article discusses what it takes for a color to be eligible for trademark protection and the legal considerations involved.
By Laura J. Winston | October 23, 2023 at 10:00 AM
Back when my daughter was in third grade, parents were invited to the classroom to talk about their jobs. I talked about trademarks and brands, discussing products they would appreciate, like HOT WHEELS miniature cars and AMERICAN GIRL dolls. At one point, I told the students that a color can be a trademark and that Mattel claims the right to the color pink as a trademark associated with their BARBIE products. A little girl named Emma spoke up and said, “That doesn’t seem fair that just one company can use a color.”
What Emma didn’t know was that she isolated the same issue that the U.S. Supreme Court had considered back in the 1990s. In Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995), the court resolved a split among the federal circuit courts of appeal when the court addressed the issue of whether a single color could be protected as a trademark under federal law.
That case involved a dispute over the right to exclusive use of a color characterized as “green-gold” applied to dry cleaning machine pads. The court ruled that the green-gold color could indeed function as a trademark if it has acquired distinctiveness in the marketplace—that is, it has become uniquely associated with a specific brand or source in the minds of consumers.
To achieve this status, a color must be used consistently and prominently in connection with the products or services, and consumers must come to recognize it as a symbol of that particular brand. Generally, this will only be the case after years of exclusive use and evidence that the public associates the color with a single source. (By the way, Emma is now in law school.)
So what does it take to be able to claim that a color is exclusively for use by one source? First, to be clear, even when a company is able to claim color as a trademark, its rights will only be limited to the goods or services for which the color is used or closely related goods/services. So while Tiffany would be in a good position to claim trademark infringement against another jewelry company using its robin’s-egg-blue color, Tiffany would not be able to prevent, say, a heating and air conditioning installation company from using this shade.
Other considerations apply as well. For example, in order to qualify for trademark protection, a color must be non-functional. For example, because orange is a color often used in safety apparatus, a seller of safety vests could not claim orange as a trademark no matter how long or extensive the use was.
Sometimes the location of color placement on a product will affect the extent of trademark rights. In the case of Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., 786 F. Supp. 2d 305 (S.D.N.Y. 2011), Christian Louboutin, a renowned shoe designer, sued Yves Saint Laurent (YSL) for trademark infringement.
Louboutin claimed that the public associated the red sole on its pumps with Louboutin and that therefore the red sole was protectible as a trademark. Louboutin went on to argue that YSL’s all-red shoes infringed on his trademarked red sole. The court agreed that the red sole qualified for trademark protection. However, it held that the protection only extended to situations in which the red was a contrasting color to the rest of the shoe, and as a result ruled that YSL’s single-color shoe design did not infringe Louboutin’s trademark because the color red, in this context, was deemed a functional and aesthetic element of the overall shoe design and not subject to trademark protection.
The concept of “aesthetic functionality” has tripped up others seeking to claim color as a trademark. For example, in Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527 (Fed. Cir. 1994), cert. denied, 514 U.S. 1050 (1995), Brunswick filed an application to register the color black for outboard marine engines. Two competing marine engine manufacturers opposed the application, taking the position that the color was functional.
The opposition was successful and Brunswick appealed. The Federal Circuit Court of Appeals upheld the opposition, in part by accepting the opposers’ argument that black is a desirable color for outboard engines because it coordinates with many boat colors, and because the color black makes the engine appear smaller, a desirable trait for consumers.
To be eligible for trademark protection, a color must be:
- Non-functional: The color should not serve a functional purpose related to the product or service. In other words, it should be purely aesthetic.
- Recognized by the public: The color must have gained recognition and distinctiveness in the minds of consumers.
Examples in Advertising: UPS’s Iconic Brown
One of the most famous examples of a company successfully using color as a trademark is United Parcel Service (UPS). UPS owns US Trademark Registration No. 2901090 for the color brown used in connection with “transportation and delivery of personal property by air and motor vehicle.”
- Instant Recognition: UPS’s brown delivery trucks are instantly recognizable, and the color has become synonymous with the brand’s reliable package delivery services.
- Consistent Branding: UPS consistently uses brown in its advertising, packaging, and uniforms. This uniformity reinforces the brand’s image and helps it stand out in a crowded market.
- Promotional Campaigns: “What Can Brown Do for You?” UPS has run advertising campaigns centered around its brown color, emphasizing the reliability and trustworthiness associated with the color brown.
Challenges and Legal Considerations
While companies like UPS have successfully used color as a trademark, it is important to note that securing trademark protection for a color can be challenging. Courts often require extensive evidence of distinctiveness and consumer recognition. Additionally, competitors may challenge the validity of color trademarks, arguing that the color is functional or not sufficiently distinctive.
Color can be a powerful tool for branding and marketing, and some companies, like UPS, have effectively incorporated it into their trademark strategy. However, the legal requirements for securing and defending a color trademark are rigorous. Businesses considering color as a trademark should seek legal counsel to navigate the complexities of trademark law and protect their unique brand identity.
Reprinted with permission from the [October 23, 2023 edition of the “New York Law Journal”] © 2023 ALM Global Properties, LLC. All rights reserved. Further duplication without permission is prohibited, contact 877-256-2472 or email@example.com.
ABOUT OFFIT KURMAN
Offit Kurman, a full-service AmLaw 200 law firm with offices throughout the East Coast and in Southern California, serves dynamic businesses, individuals and families. Founded in 1987, the firm’s 280+ attorneys counsel clients across more than 30 areas of practice. Offit Kurman helps maximize and protect business value and personal wealth by providing innovative and entrepreneurial counsel that focuses on clients’ business objectives, interests and goals. The firm is distinguished by the quality, breadth and global reach of its legal services and a unique operational structure that encourages a culture of collaboration.