A color trade mark (or color trademark, see spelling differences) is a non-conventional trade mark where at least one color is used to perform the trade mark function of uniquely identifying the commercial origin of products or services.
In recent times colors have been increasingly used as trade marks in the marketplace. However, it has traditionally been difficult to protect colors as trademarks through registration, as a color as such was not considered to be a distinctive ‘trademark’. This issue was addressed by the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights, which broadened the legal definition of trademark to encompass “any sign…capable of distinguishing the goods or services of one undertaking from those of other undertakings” (article 15(1)).
Here are some examples of color trademarks:
Despite the recognition which must be accorded to color trade marks in most countries, the graphical representation of such marks sometimes constitutes a problem for trademark owners seeking to protect their marks, and different countries have different methods for dealing with this issue.
This category of trade marks is distinguished from conventional (word or logo) trade marks that feature a specific color or combination of colors; the latter category of trade marks present different legal issues.
In the United States, the United States Court of Appeals ruled in 1985 that Owens Corning had the right to prevent competitors from using the color pink in their insulation products, thus making Owens Corning the first company in the United States to trademark a color. In 1995, the United States Supreme Court further acknowledged that a color could be used as a trademark in the case of Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995). The trademark owner must show that the trademark color has acquired substantial distinctiveness, and the color indicates source of the goods to which it is applied.
Watch this YouTube.com video to learn more about claiming color as a feature of a trademark:
Note that some bars or prohibitions exist to claiming a color trademark, as the following sections explain:
Functionality bar: The Lanham Act specifically states that “[n]o trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it (e) Consists of a mark which (5) comprises any matter that, as a whole, is functional.” 15 U.S.C. § 1052(e)(5). If a color is held functional for any product, then it is not registrable or protectable as a trademark. Several U.S. Courts have dealt with the matter, and colors have been held functional for various purposes. In Saint-Gobain Corp. v. 3M Co., 90 USPQ2d 1425 (TTAB 2007), the purple color was considered functional for coated abrasives, because “[i]n the field of coated abrasives, color serves a myriad of functions, including color coding, and the need to color code lends support for the basic finding that color, including purple, is functional in the field of coated abrasives having paper or cloth backing.” Saint-Gobain Corp. v. 3M Co., 90 USPQ2d 1425, 1447 (TTAB 2007). The Trademark Trial and Appeal Board, in In re Ferris Corp., 59 USPQ2d 1587 (TTAB 2000), held that the color pink for wound dressings was functional and not registrable, as its color resembles human skin and was selected for this specific purpose. In In re Orange Communications, Inc., 41 USPQ2d 1036 (TTAB 1996), the Trademark Trial and Appeal Board denied registration for the colors orange and yellow for public telephones and telephone booths, because it confers the goods better visibility under any lighting condition. Also, the color coral was held functional for earplugs, because it makes them easier to see in safety checks. In re Howard S. Leight & Associates Inc., 39 USPQ2d 1058 (TTAB 1996).
Aesthetical functionality bar: In addition to the functionality bar, the color cannot have an aesthetically functional purpose in order to be registrable or protected. In Brunswick Corp. v. British Seagull, for example, the United States Patents and Trademark Office’s Trademark Trial and Appeal Board held that the black color was not registrable for outboard motors: “[A]lthough the color black is not functional in the sense that it makes these engines work better, or that it makes them easier or less expensive to manufacture, black is more desirable from the perspective of prospective purchasers because it is color compatible with a wider variety of boat colors and because objects colored black appear smaller than they do when they are painted other lighter or brighter colors. The evidence shows that people who buy outboard motors for boats like the colors of the motors to be harmonious with the colors of their vessels, and that they also find it desirable under some circumstances to reduce the perception of the size of the motors in proportion to the boats.” British Seagull Ltd. v. Brunswick Corp., 28 USPQ 2d 1197, 1199 (1993). Even though there is no direct function for the color black in this case, protection was denied under the argument that consumers prefer it for aesthetic purposes.
A similar judgment was entered in Deere & Co. v. Farmhand. Deere & Co. tried to establish exclusive use of its John Deere green color as a trademark, in order to enjoin Farmhand from applying it to its products. Although the John Deere green color does not provide any specific function to the good to which it is applied, the United States District Court for S.D. Iowa “found that farmers prefer to match their loaders to their tractor”. Deere & Co. v. Farmhand, Inc., 560 F. Supp. 85, 98 (U.S. Dist. Court S.D. Iowa, 1982). Therefore, if Deere & Co. were awarded exclusive use of the John Deere green, its competitors would be in disadvantage because of reasons unrelated to the functional quality or price of its products.
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