Color as a Trademark
In a few previous blog posts, I’ve discussed the concept of color as a trademark. I looked at why the pink color of Pepto-Bismol was not able to be used as a trademark – because it was determined to be a functional feature of the product (it was in my blog post about the shape of Hershey bars), and, more recently, I looked at a case in which Rawlings was trying to protect the color gold in connection with baseball gloves as a trademark. Rawlings, of course, is famous for their Gold Glove awards.
Since this always seems to be a topic of interest – and, as we’ll see, it’s been in the news recently – I thought I’d look at a few other color trademarks, and discuss the subject more generally.
When you think of the color red, do you associate that with any company, product, or service? What about brown? Magenta? These are all colors that have been protected as federally-registered trademarks. Target holds a trademark for their signature red, UPS for brown, Tiffany’s for their Tiffany Blue, and T-Mobile for magenta. But because there are a limited amount of colors, and it would be unfair for anyone to monopolize a color, there are a variety of limitations associated with these marks.
As with all trademarks, the color must have a “secondary meaning.” It must have become meaningful to a significant portion of the public as a unique identifier of the goods or services. Tiffany’s and UPS can show that when the public sees their shade of blue or brown, in connection with their underlying goods/services (jewelry and delivery services) they immediately think of Tiffany’s jewelry boxes or UPS trucks.
However, if a company does obtain a registered trademark for a color, those rights can only be enforced against other companies with whom they are in direct competition. For example, Target cannot enforce its trademark in the color red against Coca-Cola, who also owns a trademark for the same color (more or less), because Target and Coca-Cola do not compete directly with each other. Target would, on the other hand, be able to enforce their trademark if it were to be used by a competitor, such as Walmart or K-Mart.
Another limitation is that the color must not be functional. No trademark – whether or not it is a color – can be comprised of a functional element of the product or service. To allow functional elements to be protected by trademark law would be anti-competitive, and it would cause trademark law to bleed into areas traditionally covered by patent law.
This came up in the context of color trademarks in the Hershey Bar article I liked to above:
Even a psychological value can be functional. For example, the pink color of Pepto-Bismol is considered “functional.” A court held that the color was functional because it was “soothing” to patients, thereby providing a “psychosomatic effect” and “therapeutic value” in treating upset stomachs. Because the color pink was found in a study to make patients more likely to take the medicine and affected them on a psychological level, the court ruled that Pepto’s competitors needed to use that color in order to compete effectively.
Another example of this is found in Ambrit v. Kraft. Ambrit, a frozen food company, sold their frozen desserts in royal blue packaging; soon after, Kraft began to do the same. Ambrit sued Kraft to try and stop them from using royal blue packaging, but the judge ruled in favor of Kraft because of the “aesthetic functionality” of royal blue. The logic there was that royal blue is a “cool” color- it suggests coldness and is used by many ice cream and frozen dessert producers.
Likewise, in Life Savers v. Curtiss Candy Co., Life Savers tried to stop Curtiss from using a variety of colors together. Life Savers asserted trademark rights on the multi-colored striped background on their wrapper, which was meant to represent their multi-flavored candies. The court denied Life Savers’ claim because it was a “general practice of the trade” for hard candy manufacturers to sell their candy in packages with multi-colored backgrounds to represent the assorted flavors inside.
Accent colors can become protectable brand identifiers* as well. An accent color is one that only applies to part of the product (and isn’t the color of the entire product). In a 2010 case, Wolf Appliances, Inc. v. Viking Range Corporation, Wolf wanted to stop Viking from using red knobs on its gas range stoves. Viking asserted that since both Wolf and Viking marked their ranges with their companies’ names, there could never be any confusion, even if both had red knobs. Remember that “likelihood of confusion” is the classic issue on which trademark questions usually turn. The court disagreed with Viking’s argument, using an example of a person who goes to a dinner party and notices the hostess’ range with red knobs. That person may later be at a showroom, and without remembering the brand name, might think the Viking range with the red knobs was the one that person had seen at the dinner party (even though the hostess’ range was actually a Wolf range.)
Finally we come to perhaps the most famous case in this category, one which appears to be coming to a final resolution as of a few weeks ago, Christian Louboutin v. Yves Saint Laurent. Louboutin, a famous shoe company, is well known for coloring all of its shoes’ outsoles bright red (I am informed that the outsole is the bottom part of the shoe). When Louboutin sued Yves Saint Laurent (YSL) for doing the same on their shoes, many thought Louboutin would not succeed. In fashion, there is a general understanding that a color cannot be monopolized by one designer because it would hinder creativity by other fashion designers and harm competition. The Second Circuit Court of Appeals ultimately ruled in favor of Louboutin, upholding the company’s existing trademark registration for their distinctive red outsoles. In mid-October, YSL moved to dimsiss its counterclaims against Louboutin, effectively conceding defeat in this long-running and costly legal battle.
Thus, henceforth, Christian Louboutin will enjoy the exclusive right to sell red-soled shoes, with one important exception: the Second Circuit court made it clear that this right applies only when the rest of the shoe is a different color (or colors). So anyone, including YSL, is free to produce a monochrome red shoe – including the red sole – without running afoul of Louboutin’s trademark rights.
To summarize:
- Red contrasting outsoles: protected trademark of Christian Louboutin
- Red for retail store services: protected trademark of Target
- Brown for delivery services: protected trademark of UPS
- Tiffany Blue for jewelry: protected trademark of Tiffany
- Magenta for mobile phone services: protected trademark of T-Mobile
- Pink for stomach medicine: not a protected trademark (functional)
- Royal blue for frozen desserts: not a protected trademark (functional)
- Multi-colored background for candy packaging: not a protected trademark (too common, not distinctive of one seller)
- Red as an accent color for stove knobs: protected trademark
- Gold for baseball gloves: TBA
* At some point I get tired of typing “trademark” and strive to come up with synonyms; please forgive these occasional lapses.
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