Louboutin® is Red, and Tiffany® is Blue: How to Protect Your Business’s Signature Hue
Posted on Mar 1, 2021 in Articles
Tiffany® blue. UPS® brown. And now, more recently, Starbucks® green and white.
The choice of color in a company’s branding or logo can mean much more than simply making a product visually appealing. In fact, over time, color can create a mental association with a certain level of quality. For example, many consumers immediately know that jewelry packaged in a robin’s egg blue box means it is coming from a single, high quality source, regardless of whether they recall the Tiffany® name. After years of using a color scheme and building the goodwill that comes with brand recognition, many business owners wonder how they can protect themselves against competitors attempting to use a similar hue. One potential answer? The color mark.
Color marks are trademarks that “consist solely of one or more colors used on particular objects.” While a color’s mere existence or creation is usually not enough to become “inherently distinctive” and automatically make it onto the Principal Register, a color can acquire distinctiveness over time and become protectable.
The seminal case in favor of color marks is Qualitex Co. v. Jacobson Products Co. Qualitex concerned an appeal to the Supreme Court of the Ninth Circuit’s ruling that color alone could not be a trademark. The Petitioner, Qualitex, argued the special green-gold color it used on its dry cleaning press pads was a trademark, and Qualitex sought to enjoin its competitor from using a similar color. Ultimately, the Supreme Court held a color could function as a trademark when it has gained “secondary meaning,” and consumers have come to identify the color with its source. However, if a color is “essential to the use or purpose” of the goods and trademarking the color would put competitors at a significant disadvantage, the color is said to be “functional” and may not be used as a trademark.
Therefore, whether an applicant may register a color as a mark depends on 1) if it has acquired distinctiveness and 2) how the color is used. A color mark has “acquired distinctiveness” if consumers now directly associate the color with the trademark applicant as the source of the goods. An applicant can submit affidavits and declarations to show the length of time the applicant has been using the color, the extent of use, and the nature of the use. This may be shown through specimens, market research, advertising efforts, and consumer surveys. An applicant may also show acquired distinctiveness if it can show it has been using the color in commerce exclusively and continuously for a period of at least five years.
However, a recent case, In re: Forney Industries, suggests there are rare occasions where a color may be inherently distinctive in itself, a decision that may permit specific color marks to get on the Principal Register sooner. Forney concerned an applicant’s attempt to protect its color mark consisting of a black horizontal stripe above a gradient that fades from yellow to red. The Federal Circuit stated, “Forney is not attempting to preempt the use of the colors red, yellow, and black, but instead seeks to protect only the particular combination of those colors, arranged in a particular design . . . .” The court examined four factors to determine if the color mark was inherently distinctive, including whether the color arrangement was 1) a “common” basic shape or design, 2) unique or unusual in the field, 3) a mere refinement of ornamentation already well-known to consumers for that particular type of goods or services, and 4) creating a distinct commercial impression. Ultimately, the court held the applicant’s mark was inherently distinctive, stating, “the [TTAB] erred in stating that a multi-color product packing mark can never be inherently distinctive.” Thus, while Forney is a positive development for business owners attempting to acquire color marks, it only applies in specific situations, most commonly with multi-color marks with specific color arrangements.
The nature of the color’s use is also important to determine whether it is protectable. For example, an applicant wanting to trademark the color red for fire extinguishers would likely be unable to do so, as the color red often is associated with fire rescue and helps users quickly recognize that the product may be used in an emergency. Further, other manufacturers of emergency equipment would be put at a significant disadvantage if their goods—such as fire extinguishers—were not easily recognized in a time of panic. However, Christian Louboutin was able to trademark its iconic “red bottom” shoes when the red color was only used on the sole, and the shoe upper was of a contrasting color. In the case of Louboutin, its use of the color red only serves as an identifier that a pair of shoes is from the brand, and there is no necessity or function for the red sole other than ornamentation and identification.
Color marks are also generally limited to the applicant’s classes of goods and services. For example, 3M® has claimed a color mark in the canary yellow color of Post-it® note pads and other related office supplies. However, 3M’s protection likely would not extend to an area it does not occupy and to which it is unlikely to expand, for example, clothing. However, as an increasing number of brands are continuing to expand into new product areas, a color mark’s reach may be able to grow with additional registrations.
Ultimately, business owners may think about the potential for acquiring a color mark during their early branding stages, and may consider protection once they have built goodwill around the use of a certain color or color combination. A few considerations business owners should ask themselves include:
- Is the use of this color in my field common?
- Has this color become recognizable to my customers?
- Do any other businesses in my field use this color?
- Does any business not in my field use this color that could expand into my field?
- How consistently do I use this color in marketing?
While the considerations above are not an exhaustive list, they are helpful to consider during marketing and when thinking about filing a color mark application to the United States Patent and Trademark Office. For more information on color marks or how to protect the goodwill surrounding your business, visit www.caesar.law.
 See Reg. No. 2359351 (Aug. 24, 1998); Reg. No. 2901090 (Nov. 9, 2004); Reg. No. 5754170 (May 21, 2019).
 TMEP 1202.05.
 TMEP 1202.05(a).
 514 U.S. 159 (1995).
 Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 161 (1995).
 Id. at 166.
 Id. at 169.
 See TMEP § 1202.05.
 15 U.S.C. § 1052(f) (1970).
 TMEP § 1212.06.
 TMEP § 1212.06(d).
 TMEP § 1212.05.
 In re Forney Indus., 955 F.3d 940 (Fed. Cir. 2020).
 Id. at 943.
 Id. at 947.
 Id. at 947 (citing Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 1344 (C.C.P.A. 1977)).
 Id. at 948.
 See Forney, 955 F.3d at 948.
 See In re Orange Commc’ns, Inc., 41 USPQ2d 1058 (TTAB 1996) (holding colors may be functional if easily visible and recognizable in emergency).
 See id.
 Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc., 696 F.3d 206, 211 (2d Cir. 2012).
 Id. at 227 (finding Louboutin was extended color mark protection when red sole contrasted in color with upper, but not when sole and upper did not contrast).
 Reg. No. 75264602 (Nov. 7, 2000).