Can I Register a Color as a Trademark or Service Mark?

Quick Answer

The answer is yes, but it is not easy. Color marks are not inherently distinctive, and thus, they cannot be registered on the Principal Register at the USPTO without a showing of acquired distinctiveness (secondary meaning) under §2(f) of the Trademark Act. Trademark Manual of Examining Procedure (TMEP), 1202.05. So, you may need to start at the USPTO on the Supplemental Register and later provide proof of acquired distinctiveness (i.e., the consumers associate the respective color with your goods or services). One way that may be acceptable by the USPTO to show acquired distinctiveness is to use the color as a mark for five years.

Examples

Examples of colors that were found registrable/protectable as trademarks are (per TMEP, 1202.05):

-  green-gold color combination used on dry cleaning press pads (the color was found to have acquired secondary meaning; Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d 1161 (1995));

-the colors green and yellow, as applied to the body and wheels of machines, respectively, not barred from registration on the basis of functionality; evidence established the colors had become distinctive of the goods; In re Deere & Co., 7 USPQ2d 1401, 1403-04 (TTAB 1988)

-the color pink as applied to fibrous glass residential insulation (the evidence showed the color had acquired secondary meaning); In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985);

As suggested from the examples above, for color marks used in connection with goods, color may be used on the entire surface of the goods, on a portion of the goods, or on all or part of the packaging for the goods. “For example, a color trademark might consist of purple used on a salad bowl, pink used on the handle of a shovel, or a blue background and a pink circle used on all or part of a product package.” TMEP, 1202.05. Similarly, service marks may consist of color used on all or part of materials used in the advertising and rendering of the services, such as brochures, business cards, invoices, websites, etc.

Examples of colors that were found unregistrable/unprotectable (per TMEP, 1202.05):

            - "blue motif" used in retail stores, not registrable on Principal Register without resort to showing acquired distinctiveness/secondary meaning, because it would likely be perceived by prospective purchasers as "nothing more than interior decoration”; In re Hudson News Co., 39 USPQ2d 1915, 1923 (TTAB 1996);

            - color yellow appearing as the predominant uniform background color on product packaging for cereal (evidence insufficient to demonstrate that mark had acquired distinctiveness); In re Gen. Mills IP Holdings II, LLC;

            - green rectangular background design as applied to clothing and footwear (evidence insufficient to establish that it had acquired distinctiveness as applied to clothing and footwear; TTAB found that the green rectangle was nothing more than a background design used to display the Benetton trademark and Benetton admitted that it never used the green rectangle separately); In re Benetton Grp. S.p.A., 48 USPQ2d 1214 (TTAB 1998);

            - color pink used on surgical wound dressings was found functional and thus unregistrable because the actual color of the goods closely resembles Caucasian human skin; In re Ferris Corp., 59 USPQ2d 1587 (TTAB 2000);

- colors yellow and orange held to be functional for public telephones and telephone booths, thus unregistrable, since they are more visible under all lighting conditions in the event of an emergency; In re Orange Commc'ns, Inc., 41 USPQ2d 1036 (TTAB 1996);

            Conclusion

            While color can be registered as a trademark or service mark, it is not easy, and thus, some careful planning may be necessary. Takeaways are to choose a color that cannot be interpreted as functional for the respective good or service and to promote the color as a mark, i.e., same way as you promote your other marks (logo, product name, slogan, etc.).

Disclaimer: The views and opinions expressed throughout this blog are the views and opinions of the individual author(s) and/or contributor(s) and do not necessarily reflect the views and opinions of our firm, CIONCA IP Law. P.C.