(Send contributions to mhbrill2001@gmail.com )
When overseeing the intellectual-property process in a
company devoted to color, one regularly is asked whether a color can be “owned”
by dint of trademark or copyright. The stock answer is no for copyrights
and a qualified yes for trademarks. Whenever you select a color for a
product or its packaging (or a company’s logo), you must carefully avoid colors
that are already trademarked by one of your business competitors. It is a
matter of legal opinion whether a business is to be regarded as your competitor.
If so, then as far as your business is concerned, these colors are essentially
owned by the trademark-holders. If you use the trademark colors (in any of a
broad range of contexts), the owners are likely to sue you, which will surely
be expensive and also block the sale of your product until its color is changed
or until the court case is resolved.
An article written a decade ago[1] describes several trademarked colors: John Deere green (or, more saliently, a specific green and yellow), Target red, T-Mobile magenta, UPS brown, Tiffany blue, University of Texas burnt-orange, University of North Carolina blue, Home Depot orange, Caterpillar yellow, and 3M purple.
The stock answer to our initial question is a bit too simple, as we will now show. What follows might be considered too much information, but we will proceed anyway.
How do you know you have picked a safe color? As metrologists, we naturally seek refuge in measured numbers. We’d like to define a quantified color space (accompanied by an agreed-upon illuminant/observer for object colors or a white point for emissive displays). Within that space, we’d like to know where the property line is that delineates colors that are owned from colors that are free to be used.
Surprisingly, however, color-trademark litigations proceed with no quantitative evaluation, only the verdict of a jury in a courtroom under available light and in the context decided by the lawyers. Even the system of color names (often Pantone colors) has no rhyme or reason.
It looks as if color space has turned into a minefield of ownership (perhaps worthy of the double entendre “mine” field). One of us (HSF) has had personal experience as an expert witness. Here are some details.
Only three things may be unqualifiedly trademarked in the United States: a brand name, a logo or a slogan. Trademarking a color alone is available only under very limited circumstances. Colors that are functional (e.g., the color of a medicinal pill that is used to identify the drug) or colors that are purely aesthetic are not trademark-eligible. If a trademarked logo is colored, the color or color combination is included as a property of the logo. Thus, a color may become associated with the brand, as say Coca-Cola red or John Deere green. That immediately raises the question as to what are the protected tolerances around a logo-protected color? The answer is that there are no formal guidelines. That will be decided by a jury who will be instructed to find an interference if they think the intent of the color choice was to imitate the trademarked logo in the consumer’s mind. Obviously, the farther you get from the trademarked color, the better your chances.
There is another way in which a color may become protected by law. Although it is not registerable, a product’s “trade dress,” which is its overall appearance including color, design and markings, may be claimed for protection against others duplicating it. A good example is the Coke bottle. That distinctive shape and the green glass constitute Coca-Cola’s trade dress. Notice that no other cola company uses green glass. Yet almost all breweries package at least part of their output in green glass.
That raises another issue. Trademark protection applies only to the product lines or industries in which they are granted. You are free to make your product in John Deere green if your product is not a tractor or farm machinery. What if you had a product that wasn’t a tractor or farm machinery but could possibly be made by John Deere---say, a mailbox? You probably should go to John Deere and license the green and yellow combination from them for mailboxes. They will give you an exclusive for mailboxes in their green and yellow, and farmers everywhere will rush to buy your box.
Is there a common-law trademark? Yes, there is, but it applies only locally. You can open a store called “Jones’s Grocery Store” and you can choose the color and the typescript for placing over the front door. No one else can use that logo, even if it is unregistered, but that’s going to protect you only in your small town. Someone in the town down the road a bit, or someone across town if the town is big enough, can use the same device with impunity. Again, the criterion will be intent to imitate.
Registration of a trademarked logo will, however, provide nationwide coverage, and will imply an additional benefit. You will receive protection from foreign goods that infringe your trademark from being imported.
The minefield of the situation remains how close, or how far away, does your color have to be from a registered trademark to be unassailable? Pick a color that can’t be confused with the protected color or you might find out the answer to this question the hard way.
Given these circumstances, the idea that a color is “owned” is defensible—no more fictitious than our deeming a condominium to be “owned” by its occupant when its defining walls are not. Furthermore, the metaphor of a minefield is not too extravagant.
Neither of the authors are lawyers, so the information contained here is not to be taken as legal advice. The information is intended to be a jumping-off point for further discussion within the ISCC.
Michael H. Brill and Hugh S. Fairman
[1] A. Tzatzev, Colors that are Trademarked, Business Insider (29 Sept, 2012) Colors That Are Trademarked (businessinsider.com)
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