Posts Tagged: "Color Trademarks"

Trademarks consisting solely of a color applied to products or their packaging have been protectable under U.S. law for decades—if they meet a heightened standard for protection. Since the U.S. Supreme Court decisions in Qualitex Co. v. Jacobson Products Co. and Wal-Mart Stores, Inc. v. Samara Brothers, Inc., an applicant for a color mark has been required to prove that the color actually serves as an indicator of source in the minds of consumers by showing that the mark has acquired distinctiveness (otherwise known as secondary meaning). Yet that longstanding requirement no longer applies to all color marks, after a new decision by the Federal Circuit in In re Forney, which opens the door for the first time to certain color marks gaining protection as inherently distinctive.

Registering a non-traditional trademark, such as sound clip, position mark, or a color, can offer a significant competitive advantage in a world where goods and services are marketed in a wide variety of different ways. Cadbury was but the latest household name to return to the courts in order to seek or maintain protection… When applying to register unusual marks, such as the color purple in Cadbury’s case, the description provided at the time of filing the application is of key significance and forms as much a part of the mark as the mark itself. It is, therefore, vital that the wording in the description is clear and precise so that anyone viewing the register can see what the mark is and what it protects.

The issue faced by the EU High Court was whether shape and color of Louboutin’s mark could be separated under the circumstances; i.e., whether color applied to the sole of a high-heeled shoe is essentially a “shape” mark within the meaning of the EU trademark law. The EU High Court found in favor of Louboutin, pointing out that Louboutin did not seek to protect a particular shape, but the application of a color to a specific part of a high heeled shoe. 

Yes, under certain circumstances you can trademark a color… Examples of protectable color marks include: red soles for women’s high-heel dress shoes, where the rest of the shoe is not also red (Louboutin); pink fiberglass insulation (Owens-Corning); red knobs on cooking appliances (Wolf); light blue for jewelry boxes (Tiffany); brown for parcel delivery trucks and uniforms (UPS); magenta for telecommunications services (T-Mobile); and orange for scissor handles (Fiskars).

In my previous article: Challenging Aspects of the Legal Protection of Non-Traditional Trademarks: Shape Trademarks, I mentioned that man has five senses and, accordingly, can perceive information, including trademarks, not only by sight. The diversity of human sensations cannot be reproduced by graphics alone. This is what makes the registration and protection of such trademarks, which can be also perceived by other senses, so interesting, unique and at the same time problematic.