Color Wars: The Legal Protectability of Colored Corporate BrandingPosted on Aug 13, 2019
Tina Y. Meng
Developing a strong brand is a very important element of a company’s business, primarily because it can convey critical information about the consumer experience and what the company stands for. While companies commonly receive protection for company or product logos, seeking legal protection for colors associated with a brand has proven to be a much more difficult area of intellectual property law that companies have to navigate. Among the different tools that can be used to create exclusive rights to certain colors, corporations have found the most success with trademarks, as the process is less costly and onerous than patent protection, and copyright law usually protects original works that would not capture colors.
The Legal Standard to Trademark
A color trademark can protect singular colors or particular color schemes that are associated with a corporate brand and used within a particular industry. However, only a handful of companies have been able to acquire such trademarks based purely on color. These companies include UPS, which has a trademark over what it calls “Pullman Brown,” T-Mobile, which has trademarked its bright magenta color, and John Deere, which has successfully trademarked the combination of green and yellow. 
The reason it is so difficult for companies to successfully register color trademarks is that courts have established a very high standard. In 1985, the Federal Circuit affirmatively held for the first time that Owens-Corning, a fiberglass company, could in fact trademark the “pink” color of its fibrous glass insulation. The court stated that color in this case “serve[d] the classical trademark function of indicating the origin of the goods” and facilitated “the protection of one’s good-will in trade by placing a distinguishing mark or symbol—a commercial signature—upon the merchandise or the package in which it is sold.”
This view was later reiterated by the Supreme Court in Qualitex Co. v. Jacobson Products Co., Inc., where the Court found no “obvious theoretical objection to the use of color alone as a trademark.” In considering whether Qualitex could trademark its green-gold pads used in their dry cleaning business, the Court first looked at whether the mark identified and distinguished a good, as required by the Lanham Trademark Act. In particular, the Court looked to less conventional marks that had previously been authorized, such as the shape of a Coca–Cola bottle and the sound of NBC’s three chimes, and concluded that these unique marks had all acquired important meanings to consumers beyond their abstract shape or sound. The Court held that as long as a color had similarly attained a “secondary meaning” that identifies and distinguishes a particular brand in the marketplace, there was no reason to deny registration simply because that mark was a color, rather than a shape or sound.
The Court also considered whether the color was “functional,” as companies cannot trademark useful product features since doing so can inhibit competition. The Court clarified that a mark could be functional “if exclusive use…would put competitors at a significant non-reputation-related disadvantage.” Here, however, the Court found that color was in simply decorative and was therefore non-functional and appropriate for trademark protection.
Qualitex largely establishes the framework that both the Trademark Trial and Appeal Board (“TTAB”) and companies themselves should use to assess the strength of color trademark applications. However, successfully demonstrating “secondary meaning” and other necessary elements for nontraditional trademarks is difficult because customers do not always recognize color as a company’s mark. It is insufficient to simply argue that a given color can be attributed to one brand; rather, companies must go a step further and present extensive evidence to show that the market and consumers visually associate a particular color with a company and that company only, and therefore can easily identify the source of a product or service. As demonstrated by the General Mills dispute discussed in the following section, this can be difficult for companies to prove for a variety of reasons. Additionally, many of these trademarks that are issued are limited in scope. For example, 3M successfully trademarked the color yellow, but only for its Post-it notes, and UPS’s color trademark protection is restricted to only uniforms and delivery trucks.
A recent TTAB decision denying General Mills trademark registration for its yellow Cheerios box packaging demonstrates some of the major hurdles companies face in meeting the “secondary meaning” standard established by courts. In its opinion, the TTAB pointed to the fact that General Mills regularly uses other colors, such as lilac, green, and brown, in its packaging for other Cheerios flavors as evidence that the company did not depend on a yellow color scheme to market its products to customers. Additionally, the TTAB found that General Mills did not have exclusive use of this variation of yellow, as other competitors such as generic grocery brands had used similar shades of yellow on their packaging as well. Thus, the TTAB denied the trademark grant because General Mills had not sufficiently shown that the yellow color performed an important distinguishing function for consumers.
This decision highlights the inherent tension underlying the legal standard courts have developed for trademarking colors. In order to prove that the use of a particular color is so pervasive and inextricably associated with a certain product or company, the color needs to be used without any legal protection for quite a period of time. In the meantime, however, other companies may be free to imitate that look, as seen in the Cheerios case. Thus, companies can find themselves in a catch-22 situation where factors such as timing and use of color can become determinative.
Color branding has always been a particularly salient topic in the world of fashion as well, as the use of color can become an important way for different designers, especially in the luxury space, to differentiate their product from knock-offs. For example, the shoe brand Christian Louboutin has held several trademarks in the U.S. and in countries like Belgium and Luxembourg for the designer’s widely-recognizable red lacquered (usually high-heeled) sole. However, in a recent European Court of Justice (ECJ) advisory opinion, the court called into question the validity of these legal protections by attacking the claimed non-functionality of the color. The court took issue with the proposition that the red sole was simply decorative, and stated that because the color of the sole was merged with the shape of a shoe, this created a “functional” shape that “relate[d] exclusively to the intrinsic value of the shape” of the shoe, rather than to any “reputation of the mark or its proprietor.” This conclusion is in stark contrast with Christian Louboutin S.A. v. Yves Saint Laurent Am. Holdings, Inc., where the Second Circuit held that Louboutin could obtain a trademark for its contrasting red sole because that particular feature was non-functional in the relevant space.
While this ECJ advisory opinion is not binding at this stage, it is part of a case that Christian Louboutin has brought against Dutch chain Van Haren for selling shoes with similar red soles. The case might mark the beginning of a complicated cross-national split in jurisprudence, which could ultimately lead to an increase in non-Louboutin red-soled shoes across the world, and eventually weaken the company’s brand worldwide.
As companies continue to learn how to navigate trademark laws, disputes with companies such as Cheerios and Louboutin will help to flesh out the contours of both domestic and international trademark standards. However, adjudicators should remain cognizant of the broader implications of their analyses, as certain holdings might overly complicate the trademark scheme, and thus have detrimental effects on not only proprietary corporate strategy, but also on a company’s actual business success.