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Can You Trademark Based on Color?

Are you wondering if a particular use of color can be the subject of a Federal Trademark Registration?

The short answer: Yes, color can be a Trademark — when certain evidentiary facts are present.
The longer answer follows…

What is a Trademark?

A “Trademark,” according to 15 U.S.C. § 1027, is “any word, name, symbol, or device, or any combination thereof — (1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.”

Exclusions to obtaining a federal Trademark registration are covered in https://www.law.cornell.edu/uscode/text/15/1052.

The Doctrine of Trademark Functionality

In Kellogg Co. v. National Biscuit Co., 305 U.S. 111 (1938), the Supreme Court held that the “pillow” shape of a shredded wheat biscuit was functional and not the subject of a Trademark Registration.

In the US Supreme Court case of Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844 (1982) the Supreme Court held that the colors of the brand name pharmaceutical capsules were functional and not the subject of a Trademark Registration.

In short, if the aspect is functional, it cannot be the subject of a federal Trademark Registration. However, in a footnote to Inwood Laboratories, Inc. case, on page 850, the Court wrote:

“Although sometimes color plays an important role (unrelated to source identification) in making a product more desirable, sometimes it does not. And, this latter fact—the fact that sometimes color is not essential to a product’s use or purpose and does not affect cost or quality—indicates that the doctrine of “functionality” does not create an absolute bar to the use of color alone as a mark.”

The Case of Colored Dry Cleaning Pads

Can green-gold color pads for dry cleaning presses be the subject of a federal trademark registration? Yep!

The US Trademark Office granted US Registration No. 1,633,711 for a “particular shade of green-gold applied to the top and side surfaces of the goods [pads]” to the Qualitex Company. Another company, Jacobson, later began to sell its own green-gold pads. Among other causes of action, Qualitex sued Jacobson for Trademark infringement. Eventually, the case made its way to the US Supreme Court.

On page 166 of Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, Mr. Justice Breyer wrote:

“It would seem, then, that color alone, at least sometimes, can meet the basic legal requirements for use as a trademark. It can act as a symbol that distinguishes a firm’s goods and identifies their source, without serving any other significant function…the District Court, in this case, entered findings (accepted by the Ninth Circuit) that show Qualitex’s green-gold press pad color has met these requirements. The green-gold color acts as a symbol. Having developed secondary meaning (for customers identified the green-gold color as Qualitex’s), it identifies the press pads’ source. And, the green-gold color serves no other function. (Although it is important to use some color on press pads to avoid noticeable stains, the court found “no competitive need in the press pad industry for the green-gold color, since other colors are equally usable.”)…Accordingly, unless there is some special reason that convincingly militates against the use of color alone as a trademark, trademark law would protect Qualitex’s use of the green-gold color on its press pads.”

Conclusion on Color

To answer the initial question, according to the Supreme Court of the United States:

A green-gold color for a dry cleaner’s press pad is the subject of a federal Trademark Registration.
The blue and white or the blue and red colors of pharmaceutical capsules are not the subject of a federal Trademark Registration.

Trademark issues are complex, if you need legal assistance preparing or managing your Trademark/Service Mark or Patent Applications, please contact Business Patent Law, PLLC.

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What is Trade Dress?

Generally, trade dress relates to a product’s physical appearance, including its size shape, color and design. Texture is sometimes considered part of the product’s physical appearance. It can also refer to the manner in which a product is packaged, wrapped, labeled, presented, promoted or advertised.

When the plaintiff thinks that the defendant’s trade dress is likely to cause confusion with the plaintiff’s product, the plaintiff can sue under 15 United States Code 1125. Section 1125 is entitled “False designations of origin, false descriptions, and dilution forbidden.”

Can an invention that is patented also have trade dress protection?

It depends – trade dress protection may be available.

An Illustrative case for False Designation of Origin

The drawing below from US Patent 3,646,696 is set forth below. The plaintiff’s invention was used for such things as “Road Work Ahead” signs.

After the ‘696 Patent expired, the defendant copied the plaintiff’s design. The plaintiff argued that defendant’s copying of springs 16 and 18 was a trade dress false designation of origin.

Points of Contention

The Court indicated:

Trade dress can be protected under federal law
The design or packaging of a product may acquire a distinctiveness which serves to identify the product with its manufacturer or source
A design or package which acquires secondary meaning is a trade dress which may not be used in a manner likely to cause confusion as to the origin, sponsorship, or approval of the goods
The [Trademark Act] provides a cause of action when any word, term name, or device, or any combination thereof is likely to cause confusion as to the origin, sponsorship or approval of the goods
Trade dress protection exists with the recognition that in many instances there is no prohibition against copying goods and products
Unless a Patent or Copyright protects an item, it will be subject to copying
The plaintiff must prove that the trade dress asserted is not functional

The defendant argued that plaintiff’s springs 16 and 18 shown in the above drawing were functional.

What the Court Determined

In the case of Traffix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 29-30 (2001), the Supreme Court of the United States, held:

A prior patent, we conclude, has vital significance in resolving the trade dress claim.
A utility patent is strong evidence that the features therein claimed are functional.
Where the expired patent claimed the features in question, one who seeks to establish protection must carry the heavy burden of showing that the feature is not functional
This can be accomplished, for instance, by showing that it is merely an ornamental, incidental, or arbitrary aspect of the device.

A trade dress that is functional is not enforceable under the Lanham Act [the Trademark Act].

Elements of a utility Patent are presumed functional. However, on page 34 of Traffix Devices, Inc., the Supreme Court did not completely bar trade dress protection for current or previously patented items. Mr. Justice Kennedy wrote:

“In a case where a manufacturer seeks to protect arbitrary, incidental, or ornamental aspects of features of a product found in the patent claims, such as arbitrary curves in the legs or an ornamental pattern painted on the springs, a different result might obtain. There the manufacturer could perhaps prove that those aspects do not serve a purpose within the terms of the utility patent.”

The Basic Trade Dress Question

To answer the initial question, if the part of the patented invention is functional it cannot be protected under the Trademark Act. If the part of the patented invention is arbitrary, incidental or ornament, protection of the Trademark Act may be available.

Need More Information?

If you need legal assistance preparing or managing your unfair competition issues or intellectual property Applications, please contact Business Patent Law, PLLC.