Can I Trademark a Color?

Many products use a particular color to distinguish themselves.

The definition section of the Lanham Act, 15 U.S.C. § 1127, defines trademarks as including “any word, name, symbol, or device, or any combination thereof”. Further, the Court held that a product feature is only functional, and thereby barred from trademark protection, “if it is essential to the purpose of the article or if it affects the cost or quality of the article”. 514 U.S. at 165. Under this case, products with potentially confusing colors would be denied protection under the so-called “functionality doctrine”.

There are generally two reasons for this, which often overlap. First, the color may be useful or have a function, for example, chewing gum may match color with flavor — think red cherry gum. Second, the color may purely aesthetic, like a black iPhone; color here serves no functional purpose but is an aesthetic consideration. The United States Supreme Court in Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995) held that a color could meet the legal requirements for trademark registration under the Lanham Act, provided that it has acquired secondary meaning in the market. That means that a color alone could be a trademark, if it isn’t a useful feature of the product (and usefulness doesn’t include identifying the product’s brand).

This leads to problems that defy common sense. Why should you be forced to pick a less useful color in order to get trademark-type protections? The flip side of this is that there are only so many colors distinguishable by the human eye. We all know Coca-Cola red, but if that red was shifted only slightly, you’ve got a new color, but is there a likelihood of confusion? US intellectual property law is behind the times on this issue. Colors have been increasingly used as trade marks in the marketplace, but color was was not considered to be a distinctive ‘trademark’ until the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) was ratified. TRIPS created minimum standards of protection and regulation for most forms of intellectual property in all member countries of the WTO. TRIPS also 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)).

Most if not all major corporations have registered trademarks with the USPTO, and why not? Trademark protection is some of the best bank for your buck around relating to property rights. When I drive around my hometown of Melbourne, Florida, I can’t help but think of all the businesses that should register at least some aspect of their trademark.