Anything Can Be a Trademark – Most of the Time

by Michael A. Lechter

Anything that can distinguish one company’s products or services from another’s can be a trademark, as long as it does not perform a utilitarian function. Companies have received trademark registrations for a range of things, including particular colors, certain types of goods, scents and even sounds. And such trademarks have held up even in the U.S. Supreme Court, which confirmed that a particular color can, indeed, serve as a valid trademark.

A Case In Point

Qualitex Company had been using a particular shade of green-gold on its dry cleaning pads since the 1950s. In 1989, competitor Jacobson Products began making its competing press pads a similar green-gold color. Qualitex sued for unfair competition and, ultimately, trademark infringement.

At the trial court level, Jacobson Products was found to infringe Qualitex’s trademark. The Ninth Circuit Court of Appeals reversed this decision, however, taking the position that “color alone” could not be a trademark. This court’s decision, while similar to the Seven Circuit’s interpretation of the law, conflicted with other circuits’ interpretations, which, in turn, presented an awkward situation: a trademark would be valid in one part of the country but not in another. Accordingly, the U.S. Supreme Court took a hand to resolve the conflict between the circuits, ruling unequivocally that there is no special rule that prevents color alone from serving as a trademark.

What Can Be a Trademark?

The federal trademark statute states that trademarks may include “any word, name, symbol or device, or any combination thereof.” The Supreme Court stated that “symbol or device” includes “almost anything at all that is capable of carrying meaning.” The issue centers on the significance of the use of the color to the consumer. If the consumer believes that all products of a given type that are a particular color come from the same source — the same company — then the color is a trademark.

Trademarks are intended to permit customers to make quick purchase decisions. Trademarks assure customers that an item bearing a particular mark — even a particular color — is made by the same producer as other similarly marked (or colored) items that those customers liked or disliked in the past. Trademarks also prevent competitors from appropriating a producer’s reputation, and from capitalizing on a consumer’s inability to evaluate the quality of sale items. Trademarks in the form of a color can serve these purposes.

Trademarks Versus Patents

Color, however, will only pass as a trademark when a producer chooses it arbitrarily. In other words, if the color serves a utilitarian purpose or function, or if it is inherent from the use of a particular utilitarian ingredient or component of the product, then other considerations prevail in issuing trademark registration. Product features are considered “functional” if they are essential to the use or purpose of the product; if they affect the cost or quality of the product; or if they provide a significant “non-reputation-related” advantage. Patent laws, not trademarks, cover the functional aspects of products. As noted by the Supreme Court, if a product’s functional features could be used as trademarks, “a monopoly over such features could be obtained without regard to whether they qualify as patents, and could be extended forever, because trademarks may be renewed in perpetuity.”

Do color trademarks create unresolvable disputes over whether or not confusion arises from similar but not identical shades of color? The test is simple: Is there a likelihood that, under typical marketplace conditions (i.e., certain lighting conditions), consumers would be confused? If so, there is trademark infringement.

Some Argue Against Color Trademarks

One of the arguments against permitting colors to be used as trademarks is the so-called color depletion theory: the number of colors is finite, and if colors can be used as trademarks, then ultimately, no colors will remain available for competitors. What’s more, the finite number of colors is particularly limited, because some colors have more customer appeal than others. The Supreme Court rejected this proposition. In essence, the Court indicated that a case-by-case analysis would be made, and that the functionality doctrine would cover situations where inability to use color placed a competitor at a significant disadvantage that didn’t relate to reputation or recognition.

So When Can a Color Be a Trademark?

In order for a color to be a trademark, it must distinguish one competitor’s products from another’s. A color is not a valid trademark if its primary significance is to identify the nature of the product, rather than the source of the product. In these cases, color is “generic.” And the generic interpretation of a color and functionality can often go hand in glove. The color of medical pills serves as an example. The pill color identifies the kind of medication, and consumers tend to rely on color to differentiate one type of pill from another, not to differentiate between different brands of the same product.

In a nutshell, the test is whether the color serves a significant non-trademark function, and if so, whether the color’s use as a trademark would permit one competitor to obtain a de facto exclusivity of use of an important product ingredient or utilitarian feature.

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Michael A. Lechter, Esq. is an international intellectual property expert who consults on complex litigation related to patents, trade secrets, copyrights, licensing, trademarks, and technology issues. He is counsel to the international law firm Squire, Sanders & Dempsey, LLP., and is best-selling author of “Protecting Your #1 Asset: Creating Fortunes from Your Ideas” (click here to go to Today’s Engineer book review). You can contact him at www.mlechter.com.