The use of color with other elements, such as a symbol or logo, or as part of a trade dress is well established. Prior to 1997, the courts were split on whether color alone could be a valid trademark. Certain cases had found that there was a per se rule against color alone being a trademark. Other cases had found that there was no per se rule, and that color alone could be a valid trademark.

In 1997, the Supreme Court, in Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, resolved the issue, holding that color alone was subject to trademark protection. In that case, a company colored the dry-cleaning press pads it manufactured with a special shade of green-gold. The Supreme Court stated that it could find no reason in the basic objectives of trademark law for any obvious objection to the use of color alone as a trademark, where the color had attained secondary meaning. The Supreme Court further stated that it is the source-distinguishing ability of a mark and not its status as color, shape, word or sign—that permits it to serve this basic purpose of trademark law. The Supreme Court quoted a Trademark Office publication which approved of the registration of color alone where “it has become distinctive of the applicant's goods … provided that there is [n]o competitive need for colors to remain available in the industry and the color is not functional.” The Supreme Court found in the case before it that the company's green-gold color met these requirements because it acted as a symbol. It served no other function and had acquired secondary meaning. The Supreme Court further stated that “although it is important to use some color on press pads to avoid noticeable stains, there was no competitive need in the press pad industry to use the green-gold color, since other colors were usable.” The defendant's principal argument why color alone should not have trademark protection is what has been referred to as the color depletion doctrine. As articulated by the defendant, if one competitor can appropriate a particular color as a trademark, and each competitor tried to do the same, the supply of colors would be depleted. This would result in a competitor's inability to find a suitable color, thereby putting it at a significant disadvantage. The Supreme Court found this argument unpersuasive and rejected the color depletion doctrine. The Supreme Court reasoned that when “a color serves as a mark, normally alternative colors will likely be available for similar use by others.” The Supreme Court further reasoned that the doctrine of functionality would normally prevent the anticompetitive consequences of color depletion. It gave the following examples of instances when functionality would prevent the use of color as a trademark: (1) where competitors might be free to copy the color of a medical pill where that color serves to identify the kind of medication; (2) barring the use of black for outboard motors because black has the special functional attributes of decreasing the apparent size of the motor and ensuring compatibility with many different boat colors; and (3) the use of blue for fertilizer because it indicated the presence of nitrogen. For all of these reasons, the Supreme Court held that plaintiff's green-gold color on its press pads met the requirements for protection as a trademark.

As Qualitex and other Supreme Court precedent make clear, in order for color to qualify as a trademark: (1) secondary meaning must be shown (through relevant factors including (a) advertising expenditures; (b) consumer studies linking the mark to a particular source; (c) unsolicited media coverage; (d) sales success; (e) attempts to plagiarize the mark, and (f) length and exclusivity of use of the mark); and (2) the mark cannot be functional. For a registered mark, non-functionality is presumed, while for non-registered marks, the burden is on the putative trademark owner to establish non-functionality. A product feature is utilitarian functional if it is essential to the use or purpose of the article, or affects its cost or quality. A product can also be aesthetically functional if the exclusive use of the feature would put competitors at a significant non-reputational disadvantage.

Illustrative Cases

Unique Sports Products v. Babolat VS, 403 F. Supp. 2d 1229 (N.D. Georgia 2005). This case involved a trademark dispute between two competitors who sold overgrips for tennis racquets. The court analyzed the color trademark issue both as to functionality and secondary meaning in deciding the parties' competing motions for summary judgment. The plaintiff's product was the LIGHT BLUE TURNA GRIP overgrip, which consisted of one shade of blue. Plaintiff selected the color LIGHT BLUE because it believed that it would differentiate its overgrip from the OEM and replacement racquet grips. Plaintiff obtained a trademark registration for the LIGHT BLUE color mark for grip tapes and sports racquets. The defendant was one of the largest racquet sports companies. It sold overgrips in various shades of blue, including light or powder blues to medium or royal blues. The defendant introduced a PRO TEAM overgrip to mimic the performance characteristics of plaintiff's TOURNA GRIP overgrip. It was sold in a blue color, and had a black finishing tape. (The plaintiff used a bright red finishing tape). The plaintiff presented evidence that it adopted the LIGHT BLUE color solely to distinguish its overgrips from other overgrips, and that the color LIGHT BLUE did not affect the performance, cost, or quality of overgrips, and signified nothing about the overgrips other than their source. The defendant, in turn, presented evidence that lighter colors tended to be more absorbent than darker colors, that blue is a popular color for overgrips, and that the color light blue was complimentary to many of the racquet cosmetics already on the market. The court found that there was a genuine issue of fact as to functionality since a reasonable jury could conclude that light blue was the natural color to use on overgrips because it was complimentary to many racquet cosmetics, and more absorbent than other shades of blue. To support its position that its Light Blue color mark had achieved secondary meaning, Plaintiff pointed to the lengthy period of time it had continuously sold the product and its commercial success; the substantial amounts it had spent in advertising, and an industry and tennis association survey which found that roughly 85% of those surveyed associated the LIGHT BLUE trademark with one brand of trademark, and that TOURNA GRIP was the overgrip that came in a light blue color. On the other hand, the defendant submitted evidence showing that numerous third parties had sold blue overgrips for decades. The court reasoned that this indicated that consumers were not likely to associate the color blue with a particular manufacturer. The court concluded that there was also a genuine issue of fact as to secondary meaning.

Christian Louboutin, S.A. v. Yves St. Laurent America Holding, 696 F. 3d 206 (2d Cir. 2012). This case involved a well-known designer of high fashion shoes (Louboutin) who brought suit against a leading high-end fashion house (YSL). Louboutin was best known for his emphasis on the largely ignored outsole of the shoe. Its shoes “have been characterized by their most striking feature: a bright, lacquered red outsole, which nearly always contrasts with the color of the rest of the shoe.”

The district court had held that color as used in the fashion industry could never be a trademark. It reasoned that “whatever commercial purposes may support extending trademark protection to a single color of industrial goods does not easily fit the unique characteristics and needs—the creativity, aesthetic, tastes, and seasonal change—that define production of articles of fashion.” The district court therefore found that in the fashion industry, single color marks are inherently functional. Louboutin had obtained a trademark registration for a lacquered red sole on footwear. Subsequently, YSL began marketing a monochrome line of shoes, including a red shoe. Louboutin subsequently sued and sought a preliminary injunction. The Second Circuit disagreed with the district court that color could never be a valid trademark in the fashion industry. The Second Circuit stated that Qualitex requires an individualized fact-based inquiry into the nature of the trademark and cannot be read to sanction an industry per se rule. The Second Circuit found that the Louboutin red outsole has acquired secondary meaning. Louboutin had used the mark continuously for 20 years; expended substantial sums in advertising expenditures, obtained media coverage and had sales success. The Second Circuit, however, limited the scope of protection to the Louboutin shoe to uses in which the red outsole contrasted with the remainder of the shoe, and not where a red outsole was used on a monochrome red shoe. The Second Circuit directed the Trademark Office to narrow the scope of Louboutin's trademark accordingly. Because the YSL shoe was a monochrome red shoe, it denied Louboutin's motion for a preliminary injunction.

Johnson & Johnson v. Actavis Group HF, 2008 WL 228061 (S.D.N.Y Jan. 25, 2008). The plaintiff, Johnson & Johnson (J&J), brought an action to enforce the color used on the packaging of its antibiotic ointment and cream, NEOSPORIN. This was a gold/yellow background and a green color (which was referred to as the Gold Mark). (The packaging also had a particular typeface for the brand name and a curving arrow in the gold/yellow color. However, J&J only sought relief on the Gold Mark.) On J&J's motion for summary judgment, the court addressed the two relevant inquiries for a color mark, secondary meaning and functionality. As to secondary meaning, the court found there was an issue of fact. The court stated that that there was substantial advertising and sales success, but the advertising emphasized the brand name, NEOSPORIN, and did not always emphasize or even include the Gold Mark. In addition, the court found that the survey evidence was insufficient in that the consumer recognition of the Gold Mark was not that strong. The court's analysis of functionality is more interesting for purposes of this article. The court found that J&J presented compelling evidence that the Gold Mark was not functional. Among other things, antibiotic ointments such as Polysporin come in boxes that do not use the Gold Mark. The defendants themselves manufactured an antibiotic ointment for Wal-Mart that was sold in predominantly white packaging. In addition, other colors such as blue, white and orange were prevalent in the packaging of first-aid products that were customarily sold in the same aisle in which NEOSPORIN was found. The court granted summary judgment to J&J that the Gold Mark was not functional, concluding that defendants had not presented sufficient evidence from which a jury could conclude that protection of the green/yellow color would significantly hinder competition in antibiotic ointments.

Howard Wintner is the director of litigation at the Abramson Law Group.