COLOR TRADEMARK IN THE UNITED STATES

A. Protection of Color Trademarks 1. 1 Protection for single Color Trademark

According to the European Union Court of Justice, trademark is essential “to guarantee the identity of the origin of the market product to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin”.[1] In general, trademarks served as an indication of the quality and origin of a particular product or service. Furthermore, it represents the “goodwill” of an enterprise and carries with it the reputation not only of the business but also its products and services. Trademarks is not only confined in signs and symbols, but may also encompass colors. In the United States, single color is protected under the existing law.

1. 2 REQUREMENTS OF DISTINCTIVENESS  

1. 2. 1 Substantive Conditions

1. 2. 2 Conditions establishing acquired distinctiveness

B. Enforcement of colour trademarks

2. 1 Requirement of registration

To register a color trademark before the Principal Register, there are basically two requirements that must be met – first is that the mark should not be functional and second the same must have already acquired distinctiveness.[2] The second requirement requires that the color that the enterprise wishes to register has already acquired another meaning in connection with the goods or services of the applicant.[3] Absence of any of the two requirements would only effect registration at the Supplemental Register.

Registration before Principal or Supplemental Register has important implication. If the enterprise has fully satisfied the requirements before the Principal Register, it automatically grants federal jurisdiction on issues involving trademark infringement.[4] Second, registration before the Principal also gives constructive notice against the world of the claim of ownership of the registrant.[5] Third, such registration is “a prima facie evidence of the validity of the registered mark… and of the owner’s exclusive right to use the registered mark”.[6]On the other hand, failure to meet the requirements set forth by the law may still warrant registration before the Supplemental Register provided that the mark is “capable of distinguishing the applicant’s goods’ from the goods of others”.[7] Registration before the Supplemental does not require that the goods have acquired distinctiveness.

To assert infringement of color trademark, the owner needs to prove these three requisites: 1. That such color trademark is eligible for protection; 2. That the plaintiff is the senior user of such color trademark; 3. That the defendant is allegedly using a trademark that likely creates confusion in the market so as to suggest affiliation with the plaintiff.[8] In the case of Christian Louboutin, S.A. v. Yves Saint Laurent America Holding, Inc[9], herein plaintiff sought for injunction against monochromatic shoes. In ruling against the plaintiff, the Court ruled that while the use of red sole is indeed protected under the law, it is limited to shoes where there is a contrast between the adjoining shoe and the outsole.[10] In a more recent decision, the Court ruled in T-Mobile US, Inc., et al. v. Aio Wireless LLC,[11] that Deutsche Telekom AG and T-Mobile US, Inc.’s has met the distinctiveness requirement by their constant use of magenta color in the realm of wireless telecommunication. Hence, it granted injunction to restrict herein defendant in using similar shades in the course of their advertisement and product design.                Moreover, in the course of registration, color trademark “requires specification to what part of a product and for what purpose the trade mark is applicable”.[12]2. 2 (have to be defined)

Conclusions

The main objectives of a trademark are to prevent confusion among consumers and to let producers distinguish their goods and services from other enterprises. Given these, there seems no reason why color should not be allowed to registered in the market.

According to Aslam (2006), colors can be used to “induce moods and emotions, influence consumers’ perceptions and behavior and help companies position or differentiate from the competition”.[13] Color is deemed to be an important tool when it comes to brand differentiation, due to the fact that it is the very first identification point that consumers have with respect to particular brand. Colors are in the same way important to companies as it help their products and services to be distinguished from other enterprises.[14]

Color also helps consumers in the recognition of brand.[15] It also affects the sales of an enterprise as consumers usually make their subconscious judgment with regard to a particular product within the one minute of initial viewing. It has been argued that 62% to 90% of such initial assessment done by the consumers is based on color.[16]

In a more recent case, Wal-Mart Stores, Inc. v. Samara Brothers, Inc.[17] the Supreme Court held “that no color mark can ever be inherently distinctive.”[18] In order to prove that the color has acquired distinctiveness, it is essential to ascertain whether an average consumer can identify such particular color with the specific brand of product or service.[19] Take for instance the case of Cadbury which used purple color to identify their products. It has already acquired distinctiveness due to its constant use of the same color, giving competitive advantage to the company. Other evidence that may be adduced to prove distinctiveness exclusivity and length of use, evidence of success in sales, consumer studies, advertising expenditures, and unsolicited coverage in media.[20] This has been demonstrated in the case of In re Owens-Corning Fiberglas Corp.,[21] where the Court has considered the length of time as well as the expenditures utilized by the applicant as evidence of the distinctiveness of color pink in its application. In general, the law affords greater protection to marks which are more distinct than other marks.[22] The more distinct a mark is, the stronger it is in the eyes of the law.

`It should also be noted that the protection granted by the law does not mean protection of the color per se, rather the coloration of a specific product, shape, or design.[23] It is also noteworthy to emphasize that functional colors are not registrable.[24] This means that where a particular color provides for functional or utilitarian advantage to the owner, then the same cannot be registered. To be considered functional, it should be shown that the choice of the color either “affect the cost or quality of the article” or “are essential to the use or purpose of the article”.[25] The doctrine on functionality seems an internationally accepted. For instance, in EC Harmonization Directive, one of the items that cannot be registered are those which have generic or descriptive marks, functional or natural shape.[26] In the case of Qualitex, the Supreme Court also touched the issue on functionality:

The functionality doctrine, as we have said, forbids the use of a products’ feature as a trademark where doing so will put a competitor at a significant disadvantage because the feature is “essential to the use of purpose of the article or affects its cost or quality… The functionality doctrine thus protects competitors against a disadvantage (unrelated to recognition of reputation) that trademark protection might otherwise impose, namely their inability reasonably to replicate important non-reputation-related product features. For example, this Court has written that competitors might be free to copy the color of a medical pill where that color services to identify the kind of medication (e.g. a type of blood medicine) in addition to its source.[27]

Meanwhile, those who opposed the concept of color protection based their premise on the theory of color depletion. This theory is based on the fact that “there are only a finite number of recognizable colors in the visible spectrum”.[28] Hence, it is likely to happen that the choice of colors would sooner be depleted if the law further allows the protection of color trademarks. Simply put it, if the law allows every business to use exclusively their color, it would prejudice newcomers in the business such that they would not be able to develop their own identity without impairing the color trademark of other businesses. In the landmark case of Qualitex, the color depletion theory was rejected on the ground that “hundreds of color pigments are manufactured and thousands of colors can be obtained by mixing”.[29] The Supreme Court likewise ruled:

This argument is unpersuasive, however, largely because it relies on an occasional problem to justify a blanket prohibition. When a color serves as a mark, normally alternative colors will likely be available for similar use by others. Moreover, if that is not so – if a “color depletion” or “color scarcity” problem does arise – the trademark doctrine of “functionality” normally would seem available to prevent the anti-competitive consequences that the defendant’s argument posits, thereby minimizing the argument’s practical force.[30]

The existing law on trademark has undergone several changes throughout the years. Prior to the enactment of the Lanham Act, the Trademark Act of 1905 disallowed the registration of fanciful or arbitrary symbols or words that purport to merely describe the enterprise’s product. The Lanham Act rejected this strict requirement stating that trademark could now consist of any symbol, name, device, word, or any combination thereof. The law also requires that “distinctiveness” is a sine qua non requirement to be able to register. However, the wording of the law remains ambiguous as it does not spell out expressly whether a single color may be registered as a trademark. Hence, in the case of Qualitex Co. v. Jacobson Products Co,[31] the Supreme Court has already settled that color may serve as a trademark in the United States. Thus, insofar as the US trademark law is concerned, a single color may be used and registered as a trademark. In this case, the dry cleaning press pad’s color (greenish-gold) met the requirement of the law since it acts as a symbol, having no other function than to identify the source of such press pads. The ratio of the ruling was premised from the definition of trademark as provided in the Lanham Act:

“…any word, name, symbol, or device, or any combination thereof…used to identify and distinguish goods…from those manufactured or sold by others and to indicate the source of the goods”[32]

As the provision of this law is coached in general terms, color may fall within the ambit of device or symbol. Such that the consumers may treat over time a particular color on a packaging of a product as signifying a specific brand. Conversely, “color would have come to identify and distinguish the goods (i.e. to indicate their source) much in the way that descriptive words on a product can come to indicate a product’s origin”.[33] Also, the law does not distinguish between a combination of colors and single color. It affords protection so long as it meets the minimum requirement set by the law.

There are various reasons why trademark should be protected, one of which is the principle laid down in the case of Park ‘N Fly, Inc V Dollar Park & Fly, Inc.[34] – “to protect the ability of consumers to distinguish among competing producers”.[35]

It is also paramount that the presumption of validity of the registered mark can be rebutted by evidence. In the case of Baughman Tile Co. v. Plastic Tubing, Inc.[36], herein plaintiff owned a yellow plastic tubing used for underground drainage. The defendant opposed the registration of the color contending, inter alia, that such was functional due to the fact that the color does not soften under the sun and can be easily identified during excavation. The Court ruled in favor of the defendant.

Indeed, color protection is becoming a trend not only in the United States but also in other jurisdictions. In European Union, the first attempt to liberalize the protection of color trademark happened in 1988 upon the initiative of the First Council Directive.[37]

Reference:

Aslam, M, ‘Are You Selling the Right Colour? A Cross-Cultural Review of Colour as a Marketing Cue’ (2006) 12(1) Journal of Marketing Communications 15.

Cox, T, ‘Should Colors be Protected by Trade Mark Law?’, Kent Study Law Review 1 (2014).

Froemming, J, et.al., ‘Lending Color to Trademarks: Protection and Enforcement of Color Marks in the U.S., EU, China and Japan’, 70 The Voice of the International Trademark Association 12 (2015).

Houlihan, E, et. al. ‘Single Colour Trademarks’, Intellectual Property Owners Association, 2009.

United States Patent and Trademark Office, ‘Overview of Trademark Protection in the United States,’ Global Intellectual Property Academy.

[1] Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc., [1998] ECR I-05507, para. 28.

[2] Froemming, J, et.al., ‘Lending Color to Trademarks: Protection and Enforcement of Color Marks in the U.S., EU, China and Japan’, 70 The Voice of the International Trademark Association 12 (2015).

[3] Houlihan, E, et. al. ‘Single Colour Trademarks’, Intellectual Property Owners Association, 2009.

[4] Moir, D., ‘Trademark Protection of Color Alone: How and When Does a Color Develop Secondary Meaning and why Color Marks can never be Inherently Distinctive’, 27 Touro Law Review 2 (2011).

[5] 15 USCA, S 1072 (West 2010).

[6] Ibid.

[7] Ibid, S.1091.

[8] Froemming, ‘Lending Color to Trademarks..’ 2015.

[9] 696 F.3d 206 (2d Cir. 2012).

[10] Ibid.

[11] 991 F. Supp. 2d 888 (S.D. Tex. 2014)

[12] Kudrjavceva, J, ‘Issues Surrounding Registration of Color Trade Marks’, Riga Graduate School of Law (2012).

[13] Aslam, M, ‘Are You Selling the Right Colour? A Cross-Cultural Review of Colour as a Marketing Cue’ (2006) 12(1) Journal of Marketing Communications 15.

[14] Cox, T, ‘Should Colors be Protected by Trade Mark Law?’, Kent Study Law Review 1 (2014).

[15] Moir, D., ‘Trademark Protection of Color Alone: How and When Does a Color Develop Secondary Meaning and why Color Marks can never be Inherently Distinctive’, 27 Touro Law Review 2 (2011).

[16] Ibid.

[17] 529 U.S. 205, 212 (2000).

[18] Ibid.

[19] Cox, T, ‘Should Colors be Protected by Trade Mark Law?’, Kent Study Law Review 1 (2014).

[20] Froemming, ‘Lending Color to Trademarks..’ 2015.

[21] 744 F.2d 1116 (Fed. Cir. 1985).

[22] United States Patent and Trademark Office, ‘Overview of Trademark Protection in the United States,’ Global Intellectual Property Academy.

[23] Houlihan, E, et. al. ‘Single Colour Trademarks’, Intellectual Property Owners Association, 2009.

[24] Froemming, ‘Lending Color to Trademarks..’ 2015.

[25] ‘Protectability of Color Trademarks’ (1996) Retrieved < https://www.inta.org/Advocacy/Pages/ProtectabilityofColorTrademarks.aspx> August 5, 2017.

[26] Harmonization Directive, Article 2, EC Regulation, article 7.

[27] 514 US 159 (1995) [15].

[28] Cox, Should Colors be Protected, 2014.

[29] Ibid.

[30] 514 US 159 (1995) [15].

[31] 514 U.S. 159 (1995)

[32] 15 U.S.C. Section 1127.

[33] 514 US 159 (1995) [15].

[34] 469 U.S. 189, 198 (1985).

[35] Ibid.

[36]

[37] Froemming, ‘Lending Color to Trademarks..’ 2015.