I. Introduction

Color can communicate information, such as yellow of a taxicab or red of traffic signs.  It should be no wonder, then, that color is often used to communicate the origin of goods and services—that is, used in trademarks and service marks. Not only is color often an important element of a trademark, color itself can be accorded full trademark protection provided certain requirements are met as set forth in the Supreme Court’s 1995 Qualitex decision. Particularly, the color mark must have acquired distinctiveness and cannot be a functional element of the goods or services.

Another important issue in the context of color marks is the defining of the mark itself.  In this regard, the U.S. Patent and Trademark Office [“PTO”] has promulgated regulations and case law for registration of a color mark that require defining the mark by reference to a single drawing and referencing specific goods or services. On the other hand, the recent federal appellate court decision, Smack Apparel, appears to give owners extraordinarily wide latitude in defining their color marks for enforcement purposes.

II. Qualitex Co. v. Jacobson Prods. Co.

Facing a clear split among the federal appellate courts’ treatment of whether color alone can act as a trademark, the Supreme Court of the United States heard Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995). Before Qualitex, the Circuits had been split regarding whether color alone could be accorded protection. The high court settled the issue, unanimously holding that “there is no rule absolutely barring the use of color alone.” Id. at 160.

Qualitex involved a unique shade of green-gold that Qualitex Co. had been using on dry cleaning pads since the 1950s. After competitor Jacobson began selling competing products using that shade of green-gold, Qualitex sued for trademark infringement, having registered the color for press pads with the PTO.

Considering whether color was eligible for trademark protection, the Supreme Court focused on the language of the Lanham Act. “Nothing . . . shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant’s goods in commerce.” 15 U.S.C. § 1052(f). The Court noted that “a mark,” defined as any “word, name, symbol or device” had certainly come to include color.

The Supreme Court then established the requirements for according trademark protection to color alone. As with any mark, a color mark must first and foremost be capable of identifying and distinguishing goods from those manufactured or sold by others. It must be capable of indicating the source of those goods, even if the source is unknown. 15 U.S.C. § 1127. 

The Court analogized color to the category of “descriptive marks,” which are never inherently capable of indicating source. For such categories, there is an assumption that the term—or color—was adopted for purposes other than to identify source.  The Court recognized, however, that color, like descriptive marks, could come to identify, distinguish, and indicate the good’s source through “secondary meaning.”  “Secondary meaning,” the Court explained, is acquired when, “in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.” Qualitex, 514 U.S. at 163.

As a second requirement, the Court allowed protection of color marks only for those that—like all trademarks—are not functional. “The functionality doctrine,” it explained, “prevents trademark law . . . from . . . inhibiting legitimate competition by allowing a producer to control a useful product feature.” Id. at 164. The Supreme Court reasserted its established functionality standard, stating that “a product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.” Id. at 165. The Qualitex Court, noting that sometimes color is not essential to a product’s use or purpose and does not affect cost or quality, found no universal “functional” bar to color marks. Id. at 164. 

III. Qualitex and its progeny

1. Secondary meaning

Subsequent cases have applied the two Qualitex requirements to color-related marks, including pocket knives, lawn equipment, packaging for antibiotics and artificial sweeteners, and shoes.

In The Forschner Group, Inc. v. Arrow Trading Co., Inc., 124 F.3d 402 (2d Cir. 1997), the Court of Appeals for the Second Circuit addressed whether the color red on Swiss Army-style knives had come to identify plaintiff Forschner Group, Inc.. In finding acquired distinctiveness to be lacking, the court pointed to evidence that for nearly forty years at least three other companies marketed red-handled multifunction pocket knives, some of which had become known to the purchasing public as “Swiss Army knives.” “As such, the trade dress consisting of the color red as applied to multifunction pocketknives does not serve to primarily designate Forschner as the single source of the product nor does it serve to distinguish Forschner’s product from those of its competitors.” Id. at 408. Thus, the Second Circuit denied protection to the color red because “secondary meaning” was lacking.

On the other hand, color mark owners have found success in establishing acquired distinctiveness. For example, in Deere & Co. v. MTD Holdings Inc., 70 USPQ2d 1009 (S.D.N.Y. 2004), Deere & Company [“Deere”] sought to enforce its registered trademarks and trade dress comprising solely the colors green and yellow for lawn and garden equipment. The District Court stated that Deere must show “secondary meaning” and enumerated the following factors: (1) advertising expenditures, (2) consumer studies linking the mark to the source, (3) unsolicited media coverage of the product, (4) sales success, (5) attempts to plagiarize the mark, and (6) length and exclusivity of the mark’s use.

Deere succeeded in showing “secondary meaning” with respect to its use of green and yellow as a trademark. The length of use reached back to the early 1900s on agricultural products and to 1963 on lawn and garden products. In the ten years between 1992 and 2001 it spent nearly USD 500 million on advertising products bearing the green and yellow. There had been significant media coverage, and over ninety percent of those polled identified green and yellow lawn products as being made by Deere. Finally, Deere’s sales of agricultural and lawn and garden products totaling over forty-three billion dollars between 1992 and 2001 satisfied the Court of sales success. In total, these facts convinced the Court that Deere’s green and yellow were distinctive through “secondary meaning.”

These federal appellate and trial court cases show that the determination of “secondary meaning” for color marks is similar to the same consideration for any mark. Whether for pocket knives or lawn equipment, “secondary meaning” is a factual consideration based on consumer recognition, and is usually demonstrated through survey evidence, advertising expenditures, and media and sales success.

2. Functionality

Following Qualitex, the functionality doctrine received substantial attention. The Supreme Court weighed in on it again in TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 33 (2001) delineating two clear types of functionality: “traditional” and “aesthetic.” The “traditional” variety relates to the physical, utilitarian characteristics of the goods. “Aesthetic” functionality, on the other hand, considers whether protecting the feature from infringement will place competitors at a significant non-reputation-related disadvantage. Whether “aesthetic” or “functional,” courts have dealt with the question of whether color is functional. 

Functionality has proven to be a more serious obstacle to protection than “secondary meaning.” Courts are often cognizant that color was adopted for, or has come to serve, purposes other than source identification. Thus, in the cases discussed below, color marks have been denied protection for medication and book binding. On the other hand, protection has been accorded to computer accessories and lawn and garden products. 

In Shire U.S., Inc. v. Barr Labs., Inc., 329 F.3d 348 (3rd Cir. 2003) the Court of Appeals for the Third Circuit found that color for medication served a functional purpose and was, therefore, ineligible for trademark protection. Shire U.S., Inc.’s [“Shire”] medication came in blue or orange, indicating dosage strength. Shire later began to use color in combination with shape to accommodate a greater range of dosage; combinations of blue or pale orange/peach and round or oval. 

In Shire’s suit against Barr, a manufacturer of generic versions of the medication using the same color scheme, the Court of Appeals held that the colors were functional. The Court relied on expert testimony that ADHD patients place particular emphasis on visual cues and their relying on color to identify dosage during adjustment would decrease in patient confusion. Accordingly, because colors served the functional purpose of identifying dosage, not source, the Court denied protection to the claimed color marks.

In Publ’ns Int’l Ltd. v. Landoll, 164 F.3d 337 (7th Cir. 1998), the Court of Appeals for the Seventh Circuit found that the use of gold with bookbinding served a functional purpose. Writing for the Court, Chief Judge Posner observed that the color gold had both aesthetic and traditional functional qualities.

[T]he color gold on a product or its package is a prime example of aesthetic functionality . . . play[ing] an important role (unrelated to source identification) in making a product more desirable. Gold connotes opulence, and . . .  has a long history of use in bookbinding; the spine of the booking which this book is printed is decorated with gilt. Gold is a natural color to use on a fancy cookbook. A different color on PIL’s page ends would have a better claim to be a source signifier. Id. at 342. Accordingly, because the use of the color gold was deemed to be a functional feature, the color could not be accorded protection.

Where owners of color marks have been successful in establishing non-functionality, they have been able to clearly establish the primacy of the source indicating purpose of the color mark. In Gateway, Inc. v. Companion Prods, Inc., 384 F.3d 503 (8th Cir. 2004), the Court of Appeals for the Eighth Circuit considered whether Gateway’s black and white cow spots were a functional element of its computer packaging trade dress. If the black and white cow spots were functional, Companion Products, Inc. [“CPI”] could freely use them on their computer-accessory plush cows. The court stated that “[t]he purely decorative nature of the design plays no part whatsoever on the performance of Gateway’s computers. Surely, no consumer believes that the presence of this design affects the operation of electronic components and peripherals associated with Gateway.” Id. at 508. The court then turned to “aesthetic functionality.”  “Gateway’s trade dress does not prevent CPI from using other colors and designs for their computer-decorative products. They are not placed at a disadvantage to other makers of such products because those companies may not use Gateway’s protected trade dress.” Id. at 508-09.

In Deere & Co., above, the Southern District of New York considered “aesthetic functionality” as applied to Deere’s green and yellow. The Court held that protection of the very basic colors of green and yellow in the abstract should be barred as functional in hindering the availability of other designs to other market participants.  “Deere cannot establish an exclusive right to the use of the colors green and yellow, and may not prevent MTD from using these colors, as long as they are not used on MTD’s lawn and garden equipment in a manner so similar to Deere’s use that MTD’s products are likely to cause confusion in the market place.” Deere & Co., 70 USPQ2d at 1017. “This conclusion thereby eliminates the need to address Defendant’s concern that Deere will corner the market by obtaining exclusive ownership rights over the use of green and yellow on lawn and garden equipment.”

This recent case law has developed Qualitex’s functionality requirement in its application to color marks. The owner of a color mark will have to show that its mark is neither “traditionally” nor “aesthetically” functional to gain protection.

IV. Defining the mark

Another challenge for owners of color marks is defining the mark itself. In promulgating registration requirements, the Patent and Trademark Office follows Qualitex in requiring demonstration of acquired distinctiveness and lack of functionality. The PTO further demands that the color mark be defined by reference to a particular representation and specific goods or services. A recent federal appellate court decision suggests, however, that even vaguely defined and unregisterable color marks may be accorded significant protection, thus muddying the waters.

1. PTO registration requirements

Lest the distinction between registrability and protectability be lost, it is critical to note that it is not registration that creates the exclusive property right in trademarks.  The owner of a mark already has a property right established through his use. This is what is meant when it is said that U.S. trademark law is a use-based system. There are important legal advantages accorded to registered marks, however. Registration with the PTO establishes prima facie evidence of ownership of the mark and of the mark’s validity—that is, that the mark is distinctive and nonfunctional. Registration also grants the holder of the registered mark a forum in federal court and makes available treble damages in counterfeiting cases. 

There is no shortage of color-only marks on the Principal Register of the PTO. As indicated, attaining registration on the Principal Register indicates that the color mark has not only been proven to the satisfaction of the PTO that the color is non-functional, but also that it has already acquired distinctiveness through “secondary meaning.” Among those registered are:

 brown and gray for steel plates (Pic 1, Reg. No. 3,535,474),

orange on the starter housing and grey on the body of leaf blowers (Pic 2, Reg. Nos. 3,400,476 & 3,400,477),

 red and black on armored cars (Pic 3, Reg. No. 3,315,445),

blue, red, and yellow color scheme on passenger airplanes (Pic 4, Reg. No. 3,297,309),

white, red, yellow, and blue for shirts and hats (Pic 5, Reg. Nos. 3,243,999 & 3,267,984)

The PTO requirements for registering a color mark track closely with Qualitex. The Trademark Manual of Examining Procedure [“TMEP”] instructs that color marks are never inherently distinctive, always requiring a showing of acquired distinctiveness to be registered on the Principal Register. The TMEP also demands that a color mark be non-functional. There are, however, additional requirements unique to the application and examination process. The PTO further demands that color be used in conjunction with particular goods or services. This is due in part to the unique rigors of the application and examination process, which require examination of a drawing, a written description of the mark, and a specimen.

Not based solely on procedural logistics, the PTO’s drawing and written description requirements stem from crucial public policy in “providing notice [to the public] of the nature of the mark sought to be registered.” TMEP § 1202.05(d). The PTO demands that a drawing for a color mark include a separate statement describing where the color appears and how it is used on the mark. This, plus the written description of the particular color as applied to the goods or services, prevents registration of “phantom marks”— marks that change depending on their use and offend the PTO policy forbidding registration of more than one mark per application. 

The Federal Circuit faced this issue as it related to color. In In Re Thrifty Inc., 274 F.3d 1349 (Fed. Cir. 2001), the Court affirmed the Trademark Trial and Appeal Board’s [“TTAB”] refusal to register the color blue as it applied to Thrifty Inc.’s [“Thrifty”] car rental centers, signs, and employee uniforms. The problem was that Thrifty’s application drawing showed a building in dotted lines with the upper portion of one wall depicted blue, which did not correspond with any of Thrifty’s several descriptions of the mark, ranging from the color blue used in conjunction with the rental centers, vehicles, signs, uniforms, and other advertising to simply “the solid color blue” in the abstract. 

The PTO refused Thrifty’s application; none of the descriptions correlated to the drawing. “The multiple impressions created by the wide variety of objects sought to be covered under the proposed description differ significantly from the original mark of a color placed on a building. The multiple forms described . . . do not create the impression of being essentially the same mark as the color blue applied to a building as described in the original application.” Id. at 1353. The PTO, TTAB, and Federal Circuit were willing to grant Thrifty protection of the color blue as used on a wall and even as used in ways that convey commercial impressions similar to that. But because of the attempt to claim disparate uses of blue in a single application showing only blue walls, Thrifty would not succeed.

Thus, the PTO’s drawing and description requirements, along with its prohibition of “phantom marks,” serve to provide notice to the public of the nature and scope of the claimed mark. The recent federal appellate decision, Bd. of Supervisors for La. State Uni v. Agric. and Mech. Coll. v. Smack Apparel Co. 550 F.3d 465 (5th Cir. 2008), suggests, however, that owners of color marks may not always need to define their marks in such a manner in an enforcement context.

2. Smack Apparel
 
Since 1998, Smack Apparel Co. [“Smack”] had been making and selling t-shirts targeted at fans of college sports teams, using school colors and loosely associated printed messages. Notably, these t-shirts did not use the names or even logos of the schools. Based upon previous dealings with universities, Smack believed that by avoiding use of registered trademarks it avoided possible trademark infringement liability. Smack’s products did, however, display the well-known school colors in conjunction with other indicia.

Louisiana State University, the University of Southern California, the University of Oklahoma, Ohio State University, and the Collegiate Licensing Company [collectively “Universities”] sued Smack in the United States District Court for the Eastern District of Louisiana [“District Court”] in 2004. The Universities met with immediate success. The District Court found liability at the summary judgment stage and Smack appealed to the Court of Appeals for the Fifth Circuit.

The issues before the Fifth Circuit were whether the Universities had ownership in a legally protectable mark, and if so, whether there was infringement, as shown through likelihood of confusion between the Smack t-shirts and authentic university apparel.  The Court considered the longstanding use of the color schemes and their prominent display on merchandise, the well-known nature of the colors as representing the schools themselves, and the presentation in combination with team feats, scores, or geographical location. In the context of t-shirts, such use had established “secondary meaning.”

The Fifth Circuit then affirmed the finding of likelihood of confusion. Among the factors considered were the similarities between Smack’s and the Universities’ licensed products, the overlap in methods of advertising and points of sale, and Smack’s intent to profit from the Universities’ reputations. These “digits of confusion” combined to create a clear impression in the consumers’ minds of affiliation. Thus, Smack was impermissibly free-riding upon this deceptive appearance of affiliation.

In one sense, Smack Apparel could be read as a modest extension of Qualitex to protect color schemes and combinations in addition to color alone. In another sense, Smack Apparel ultimately accords trademark protection to “marks” that would be simply unregisterable with the PTO. The Smack Apparel Court found that the combination of colors with ever-shifting “indicia” was sufficiently definite to accord protection despite the fact that they would no doubt offend PTO policy against “phantom marks.” In a trademark system premised on use, one might wonder what exactly had the Universities used that garnered them such sweeping protection.  They claimed that their trademarks lay in the school color combinations “on merchandise that combines other indentifying indicia referring to the Universities.”  Smack Apparel Co., 550 F.3d at 475. Yet, the vague “identifying indicia” hardly provides notice to the public. On Smack’s offending t-shirts, “identifying indicia” referred to notable athletic victories or season results. It is conceivable that the mention of an athletic conference or a school nickname “refer” to the Universities as “identifying indicia.”

Further, “merchandise” could conceivably act as the indicia itself. Perhaps a novelty-sized football painted LSU crimson and gold, or a USC cardinal and gold pennant are “merchandise” that in themselves refer strongly enough to the respective institutions to be protected.

Smack Apparel appears to have side-stepped the registrability requirement that there exist a significantly similar commercial impression between a protected mark and an asserted one. It also arguably removes the common-law trademark requirement of actual use, skips right past intent to use, and lends protection based on imaginable use. Whether Smack Apparel opens the door to broader and more expansive claims of protection over color marks, or is limited to the facts in this particular case, remains to be determined.

V. Conclusion

From pink fiberglass insulation to crimson and gold athletic apparel, the last three decades in U.S. trademark history have been colorful, to say the least. Qualitex established a legal framework for the assessment of color marks, requiring the same basic requirements as for any mark; that the color mark be distinctive and non-functional. Subsequent case law further developed this framework, giving structured analysis to “secondary meaning” and “traditional” and “aesthetic” functionality. The PTO parallels these essentials for registration of color marks, and provides clear guidance in their definition through its drawing and description requirements.

As we turn the corner into the second decade of the twentieth century, however, color marks are taking on all new dimensions. Smack Apparel has broadly defined color schemes coupled with any secondary indicia as protectable marks. In this uncertain legal environment the protection, registration, and enforcement of color marks raise a number of important issues that need to be carefully evaluated.

About the author:
H. David Starr is a Senior Associate Attorney in the Trademarks and Copyrights Department of The Nath Law Group. 

Gregory G. Bennett is an Associate Attorney in the Trademarks and Copyrights Department of The Nath Law Group.