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self-study / Alternative Dispute Resolution

Color me mine: Trademarking a color

Harvey peter web

Peter Harvey

Principal, Harvey & Company

Email: pharvey@harvey.law

Conway caitlin web

Caitlin C. Conway

Associate, Harvey & Company

Email: cconway@harvey.law

Shutterstock

Can you trademark a color? After years of debate, this question has been put to rest: yes. The debate now involves less fundamental questions. This article briefly highlights two: First, what kind of showing does the U.S. Patent and Trademark Office require to register color trademarks? Second, what evidence do courts require of an owner's exclusive use to enforce color trademarks? And in each case, what are the obstacles typically encountered by color trademark owners?

History of Colors as Trademarks

For a long time, the USPTO and courts rejected the notion that a color alone could serve as a trademark. See, e.g., Campbell Soup Co. v. Armour & Co., 175 F.2d 795 (3d Cir. 1949); Life Savers Corp. v. Curtiss Candy Co., 182 F.2d 4 (7th Cir. 1950). The position was backed by two rationales: color depletion and shade confusion.

Under the color depletion rationale, the argument was that the number of colors available was limited; allowing those colors to be monopolized would result in the depletion of colors until none were left. First Brands Corp. v. Fred Meyer, Inc., 809 F.2d 1378 (9th Cir. 1987). Under the shade confusion rationale, the concern was that determinations of infringement would boil down to the question "How different do the colors have to be?" -- a question that could only be resolved through litigation. NutraSweet Co. v. Stadt Corp., 917 F.2d 1024 (7th Cir. 1990).

The U.S. Court of Appeals for the Federal Circuit was first to reject the rule that a color could not serve as a trademark. In In re Owens-Corning Fiberglas Corp., 774 F.2d 1116 (Fed. Cir. 1985), the court held that Owens-Corning was entitled to register the color pink as a trademark for fiberglass insulation, upon a showing of secondary meaning. Uncertainty among the circuits followed this decision. The U.S. Supreme Court put the matter to rest when it held that a color is capable of being registered and protected as a trademark. Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995).

What Must an Applicant Show?

As a general proposition, all trademarks must be evaluated in context. For example, APPLE as a trademark for a computer is a strong mark, but the same word as applied to the fruit is generic and can never serve as a trademark for that category of goods. Similarly, as an initial consideration, a color cannot be registered "in the abstract." The color must be used in a particular manner, for example, as the color is applied to a product or a package, or in connection with some aspect of a service. See McCarthy on Trademarks and Unfair Competition, Section 7:40 (5th ed. 2019); Trademark Manual of Examining Procedure Section 1202.05(d)(i)-(ii) (5th ed. 2007). For example, Tiffany's light blue is registered for, among other things, "retail store and mail order catalog services," with the mark consisting of robin's egg blue used on catalog covers, boxes and shopping bags; UPS's brown is a registered U.S. service mark for "motor vehicle transportation and delivery of personal property," the mark consisting of brown applied to the vehicles used in performing the services; Veuve-Clicquot Ponsardin's orangish-yellow is a registered U.S. trademark for "champagne," with the mark consisting of orangish-yellow used on the label and shipping boxes for the goods; and T-Mobile's magenta comprises registered U.S. trademarks for "telecommunication equipment" and "telecommunication and information technology services," with the marks consisting of magenta as applied to the packaging for the goods and as used on the background of product displays and advertisements found in a store.

Additionally, as with all trademarks, a color mark must be both distinctive and nonfunctional.

Distinctiveness

A trademark can be inherently distinctive, or it may acquire distinctiveness. A mark that is inherently distinctive is one that prospective purchasers are likely to perceive as a designation or origin, because of the nature of the designation and the context in which it is used. Restatement (Third) of Unfair Competition Section 13 (1995). A mark that has acquired distinctiveness, also known as secondary meaning, is one that prospective purchasers have come to perceive as a designation or origin, as a result of its use. Id.

A color trademark can never be inherently distinctive -- the owner must prove secondary meaning in order to register (or protect) it as a trademark. Qualitex, 514 U.S. at 165; see also Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 211-12 (2000). Evidence relevant to a number of factors may establish secondary meaning.

For example, an inference of secondary meaning may be drawn from evidence of widespread exposure of the mark to consumers. Facts relevant here are the amount and nature of advertising of the mark, the length of time the mark has been in use, and the volume of goods or services sold under the mark. McCarthy, Section 15:48-52.

Proving secondary meaning is helped by the use of "look for" promotion of the color, where the advertising features the color. Examples include Wolf Appliance's campaign asking consumers to "Look for the red knobs," or UPS's question, "What can Brown do for you?" In Owens-Corning, the Federal Circuit reversed the USPTO's refusal to register the color pink as a trademark for fiberglass insulation. The court found that Owens-Corning's extensive advertising featuring and/or calling out the color pink showed a relationship between the color pink and Owens-Corning in the minds of the consuming public. There, the "look for" advertising included:

• Television and radio commercials, print ads, and point of sale advertisements featuring the Pink Panther cartoon character and various taglines and slogans, including "You'll Love That Pink," "Think Pink," "Buy Pink," "Install Pink," "Pink of Perfection," "The Pink Cooler," "Big Pink," "Love that Pink," "Pink Power," "America's Favorite Pink Product," "Tickled Pink," "Put your House in the Pink," "Up with Pink," "Prime Time Pink," "Think More Pink," "Beat the Cold with Pink," "All that Pink," "Plant Some Pink Insulation in your Attic," and "Colored Pink So Your Customers Will Recognize It As the Latest and Best!";

• Advertisements for a "February Pink Sale"; and

• "Pink" promotional items for real estate developers, which Owens-Corning said "lets customers know that you have invested in quality insulation -- Owens-Corning Fiberglas."

Secondary meaning may also be established by substantially exclusive and continuous use as a trademark for at least five years, or by survey evidence showing that an appreciable number of consumers associate the color designation with one source -- the applicant. McCarthy, Section 15:62.

It can be challenging to show that a color has attained secondary meaning. Illustrating this difficulty, General Mills was denied registration of the color yellow for CHEERIOS, or, more specifically, for "toroidal-shaped, oat based breakfast cereal." In re General Mills IP Holdings II, LLC, 124 USPQ2d 1016 (TTAB 2017). General Mills failed to establish secondary meaning, despite evidence of continuous use of yellow on the CHEERIOS box since 1945; billions of dollars spent on advertising and billions of dollars in sales in just one decade; look-for advertising featuring the tagline "It's the big yellow box that everyone knows, the one and only CHEERIOS" and references to "that yellow box"; abundant press describing CHEERIOS' "iconic," "distinctive," "instantly recognizable" and "signature" yellow box; and a survey showing 48.3% of respondents associated the yellow box with CHEERIOS. Fatal to General Mills' application was its lack of substantially exclusive use -- the examining attorney cited 23 other cereal products that used similar yellow packaging, including by General Mills' biggest competitors. Furthermore, the board discredited the survey results because the question implied that only a single brand should be named, and "unless the subjects spontaneously elaborated, the survey would not show whether subjects believed the color yellow was associated only with the maker of the Cheerios brand."

Nonfunctionality

The functionality doctrine bars from trademark protection features or design elements that are functional. Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 1530 (Fed. Cir. 1994), citing Owens-Corning, 774 F.2d at 1120-21. Courts have recognized two types of functionality -- utilitarian and aesthetic. Under the utilitarian functionality doctrine, a feature is functional if it is "essential to the use or purpose of the article" or "affects its cost or quality." Qualitex, 514 U.S. at 165. Under the aesthetic functionality doctrine, protection is denied to features for which there is a "competitive need." Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 1531 (Fed. Cir. 1994). Put differently, a feature is functional if granting exclusive use of that feature would "put competitors as a significant non-reputation-related disadvantage." Qualitex, 514 U.S. at 165.

In Qualitex, the Supreme Court held that the functionality doctrine did not bar Qualitex's use of a green-gold color on its dry cleaning press pads from serving as a trademark. The court noted that the "green-gold color acts as a symbol" which had attained secondary meaning and identified the press pad's source. While recognizing the importance of using some color on press pads to "avoid noticeable stains," the court noted that there was no competitive need for the use of green-gold specifically, "since other colors are equally usable."

The following colors have been denied registration due to their functional purpose:

• Black for the outboard motor of a boat was held functional because it "exhibits both color compatibility with a wide variety of boat colors and ability to make objects appear smaller." Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527 (Fed. Cir. 1994);

• Purple for sandpaper was found functional because in the coated abrasives field, color coding was often used to distinguish grit size. Saint-Gobain Corp v. 3M Co., 90 USPQ2d 1425 (TTAB 2007).

• Yellow and/or orange for pay phones and phone booths were held functional because the colors "stand out" and are "highly visible by a passing motorist." In re Orange Communications Inc., 41 USPQ2d 1036 (TTAB 1996);

• Coral for earplugs were found functional because brightly colored earplugs are "more readily visible," aiding in "monitoring for employee compliance with health and safety regulations." In re Howard S. Leight and Associates Inc., 39 USPQ2d 1058 (TTAB 1996).

Use of color as a trademark on pharmaceuticals raises some interesting complexities. While drug capsule colors can in some cases achieve federal trademark registration (see, e.g., U.S. Registration No. 2806099 for the color purple), there are strong functionality arguments against registration. For example, where "patient confusion, resistance and anxiety will result" if generic pills don't look like the name brand, the pills' color has been held to serve a functional purpose. See McCarthy, Section 7:50 (collecting cases). A related argument is that color facilitates identification of the type of medication. Id.; see Shire US Inc. v. Barr Laboratories, Inc., 329 F.3d 348 (3d Cir. 2003) (denying preliminary injunction against the imitative coloring of a generic drug because "the evidence indicated that the drug colors were functional in identifying correct dosage and promoting patient acceptance of a generic substitution."). Similarly, courts have concluded that in some cases, a certain color has become "the generic indication of a type of drug regardless of source." See cases cited in McCarthy, Section 7:51.

How Is a Color Trademark Enforced?

While issues that arise in registration also arise in the enforcement of color trademarks, enforcement matters raise some unique questions. In a trademark enforcement action, the court must analyze two things: first, whether the mark merits protection, and second, if it does, whether the use of a similar mark is likely to cause consumer confusion.

Whether the Mark Merits Protection

Secondary meaning, naturally, is a primary issue in determining whether a mark merits protection. Courts analyze secondary meaning the same way that the USPTO does. In T-Mobile US, Inc. v. AIO Wireless LLC, 991 F.Supp.2d 888 (S.D. Tex. 2014), T-Mobile sought a preliminary injunction against AIO Wireless, asserting that AIO's use of a plum color in its trade dress for consumer wireless telecommunications services and products infringed T-Mobile's use of magenta in the same industry. AIO asserted that T-Mobile did not have a protectable mark in magenta because it lacked secondary meaning. The court determined that T-Mobile's magenta color had acquired secondary meaning, based on evidence including use for over 10 years, wide exposure through advertising that both prominently featured the color and utilized "look for" promotion, hundreds of billions of dollars in sales to tens of millions of consumers, and a consumer survey showing that 50% of the relevant consumers associated magenta with only one company: T-Mobile. The court rejected AIO's arguments that T-Mobile's use of inconsistent shades of magenta (a shade confusion rationale), as well as third party use of magenta, prevented the mark from being distinctive. The court was unpersuaded by the argument that some amount of shade variance precludes secondary meaning. The court further noted that despite some third-party usage of magenta, the majority of relevant consumers still associated the color with T-Mobile.

Both secondary meaning and functionality were issues in Christian Louboutin S.A. v. Yves Saint Laurent America Holdings, Inc., 696 F.3d 206 (2d Cir. 2012), where Louboutin sought to enjoin Yves Saint Laurent's use of a red sole on a monochromatic red shoe. The 2nd Circuit found that Louboutin's Red Sole Mark, which consisted of a red, lacquered outsole of a woman's shoe, was distinctive, citing Louboutin's length of use, advertising expenditures, consumer surveys, and unsolicited media attention. However, the court found the mark to be distinctive only when the shoe's upper contrasted with the red color of the sole, limiting the scope of Louboutin's mark.

The 2nd Circuit was also faced with the question of whether the unique considerations of a specific industry could render use of a color functional per se in that entire industry. The district court had held that a single-color mark is necessarily functional in the fashion industry. The district court observed that denying designers the use of a full color palette would hinder competition in an industry defined by its constantly changing styles, tastes and trends. The 2nd Circuit found this holding to be inconsistent with Qualitex, and rejected the district court's holding that a single color could never serve as a trademark in the fashion industry.

Whether Use of a Similar Mark Is Likely to Cause Confusion

In enforcement cases, proving the existence of a valid trademark in a color is only half the battle. A plaintiff enforcing its color trademark must also show that a competitor's use of a similar color is likely to cause confusion among relevant consumers as to the source, association or sponsorship of the plaintiff's goods or services.

In Louboutin, the 2nd Circuit limited the scope of the Red Sole Mark, finding that protectable trademark rights existed only in a lacquered red sole applied to a shoe with an upper of a different color. The court noted in particular that the contrast between the red sole and the upper was distinctive, citing consumer surveys that identified the red sole rather than the general use of red, and Louboutin's evidence which overwhelmingly showed contrasting, not monochromatic, shoes. Therefore, YSL's use of a red sole on a red shoe was not a use of, nor was it confusingly similar to, Louboutin's Red Sole Mark.

In T-Mobile, the court found that AIO's use of a plum color did infringe T-Mobile's magenta mark. Applying the 5th Circuit's multi-factor test of likely confusion under Oreck Corp. v. U.S. Floor Systems, Inc., 803 F.2d 166 (5th Cir. 1986), the court found T-Mobile's magenta mark to be strong, for the same reasons that it had acquired secondary meaning. Additionally, the court concluded that T-Mobile and AIO had very similar products and services, targeted similar markets, used similar advertising media, and, employing the 5th Circuit's "subjective eyeball test," found that the marks were similar in appearance. The court also credited T-Mobile's consumer survey which supported a finding of actual confusion.

T-Mobile, and its German parent company Deutsche Telekom, have earned a reputation for zealously enforcing its magenta trademark, both in the U.S. and abroad. T-Mobile has also sought to enforce its mark against uses outside the telecommunications industry, including tech blog Engadget (Charlie Sorrel, "Deutsche Telekom to Engadget: We Own The Color Magenta," Wired, April 1, 2008), smartwatch company OXY (Rita El Khoury, "Deutsche Telekom And T-Mobile Force Another Company To Change Its Logo Because It Was Too Magentastic," Android Police, November 15, 2015), IT companies Datajar and Compello ("T-Mobile owner battles dataJAR over magenta logo," BBC News, May 14 2018; Doreen Carvajal, "Companies see red over rights to the color magenta or use of stripes," New York Times, March 16, 2008), and most recently, against insurance company Lemonade (Ingrid Lunden, "Lemonade gets nastygram from Deutsche Telekom over its use of magenta, says it will fight," Tech Crunch, November 4, 2019).

Conclusion

Proving, registering and enforcing trademark rights in single colors presents unique challenges. While the "color depletion" and "shade confusion" rationales for rejecting protection have been firmly and finally rejected, color mark claimants can still face considerable obstacles. Establishing secondary meaning can be an uphill battle. As the General Mills case shows, notwithstanding enormous sales, advertising and distribution over many decades, proving that the owner's use of a particular color in a particular field is substantially exclusive may be difficult. Functionality presents its own difficulties, as well, as Brunswick demonstrates for outboard motors and Barr Laboratories for drug capsule colors. And even assuming these hurdles are surmounted, a color trademark owner is still faced on the enforcement side with having to prove likely confusion.

All this said, ownership of a single color trademark in a particular field can bring powerful marketing benefits while reinforcing and adding considerably to the value of related word marks, as such well-recognized brands as Tiffany's blue for jewelry and related services, UPS's brown for transportation and shipping services and Veuve Clicquot's orangish-yellow for champagne attest. 

#586

Ben Armistead


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