2017: The Year of Colors in Trademark Law

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Trademarking a color might seem unusual but it’s not impossible. The main function of a trademark is that it helps in identifying a source of the goods or services. Thus, it is a source identifier.  A color trademark is a non-conventional trademark where at least one color is used to perform the trademark function of identifying the origin of products or services. What is the first name that pops into your mind when I say the color brown for package delivery services? (Yes, you are right! It’s UPS). Now, let’s try it one more time, what is the first name that pops into your mind when I say the color magenta for cellular services? (Right again, it’s T-mobile!)

As a general rule, color marks are never permitted to be registered on the Principal Register of the USPTO, unless, the applicant proves or establishes that the mark (color mark) has acquired distinctiveness or secondary meaning in that particular field. Remember the game we played in the beginning? This exactly what it means, the color pink and brown have acquired a level of distinctiveness in their particular fields that a consumer will instantly identify those colors with that brand.

Now coming to the general rule relating to color marks, why is the rule structured like this? The USPTO has explained that colors are not inherently distinctive and thus cannot function as a trademark (since trademarks are primarily source identifiers, they should be inherently distinctive).

Here are some examples of colors that are trademarked in their particular field/industry:

  • Green-gold color for dry cleaning presses (Qualitex)
  • Brown for package delivery services (UPS)
  • Magenta for cellular and cell-phone services (T-Mobile)
  • Pink for home construction material & insulations (Owens-Corning)
  • Turquoise/Blue for jewelry (Tiffany)
  • Red for retail stores (Target)
  • Red for outsoles/ heels if paired with contrasting color (Christian Louboutin)
  • Canary yellow for sticky notes (Post-it)
  • Orange for home supplies & home improvements (The Home Depot)

As evident from the above examples, a color can only be trademarked if it has acquired a certain level of distinctiveness in its particular industry/field. Another important aspect to consider is the functionality of the color (i.e. whether the color adds a functional advantage, for e.g. red for danger), so if a color adds functionality then it cannot be trademarked.  

Color marks in 2017:

 

  • Amazon’s trademark for rotating blue rings on its Echo products

 

2017 has been Amazon’s year. The ecommerce giant’s acquisition of WholeFoods and subsequent approval by the Federal Trade Commision is the talk of the town! But it seems that was not enough. Amazon filed a trademark application last July with the United States Patent and Trademark Office (USPTO) for trademarking its signature rotating cyan blue rings that appear on its Alexa enabled Echo smart speaker. Amazon eventually overcame the opposition raised by the examining attorney, the opposition stated that the rotating blue rings are a usually signified as “loading wheels” in the industry. In its reply Amazon stated that, the loading wheels that are very common in the industry is associated with lack of service or as a waiting time, whereas their rotating blue rings actually mean that Alexa is thinking and thus consumers would associate with Amazon’s products.

 

  • General Mills’ trademark for yellow color on Cheerios box

 

In August, General mills was denied trademark for the color yellow for oat-based cereals. General Mills had been trying to trademark the color yellow since the last two years. The Trademark Trial and Appeal Board  (TTAB) rejected the argument that consumers identify the color yellow for cereals with Cheerios signature yellow box. The board said that since several other brands use the color yellow for cereals it is unlikely that the consumer will perceive yellow packaging as an indicator of cheerios cereal.

Ultimately, the test that colors need to prove is identification of the source of goods/services. So far several famous marks have been able to prove that, what is their secret you ask? Well, the answer is simple, it is good and smart marketing of their product along with the color. (For example UPS constantly used the phrase “What can brown do for you?” in all of its advertising and marketing campaigns; Tiffany & Co. used the turquoise color literally everywhere, be it their website, their stores, their shopping bags, boxes etc.)

2017 indeed has been the year of colors in trademarks. It will be interesting to see if Amazon’s trademark proceeds to registration or not, or if Cheerios still continues to pursue its yellow cereal box claim.

As a concluding note, I feel that the ultimate judge for whether color marks serve their purpose or not are people like you and me, the consumers. After all let’s not forget that trademark law is a very consumer-centric law and it is there to benefit us. So, will you think of Cheerios when you say the color yellow for cereals next time?


Anay Amin graduated from Northwestern University, Pritzker School of Law with a Master of Laws (LLM) degree.  He holds bachelor’s degree in Arts (B.A, Honors) and his first Law degree (L.L.B., Honors) with a specialization in Intellectual Property from Institute of Law, Nirma University, India. Anay has a keen interest in international arbitration and its developments. In addition, he is a food-enthusiast and loves to cook and try new cuisines.

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