Non-traditional trademarks – Color Trade Dress

In other blog articles, we have considered the registration of nontraditional marks such as color for USPTO protection under the Lanham Act. Colors are an especially powerful mark for a company, but the burden to show the color mark should be protected (i.e. a federal monopoly granted to the user), is understandably high. After all, there are a limited number of colors in the universe. We can’t assign them out to individual companies, leaving no choices for newcomers. In determining whether color can be registered as a trademark, courts will carefully analyze whether the color:

  • has a non-trademark purpose
  • is the best or one of a few superior colors available for that purpose
  • is important to consumers
  • has other alternatives for use by others
  • whether other competitors are using that color for the same purpose

For example, a flesh or pink colored bandage or wound dressing would be unfairly monopolized by one company and unfairly limit competitors. A product that must be easily visualized in dark or smokey environment could not claim a monopoly on neon yellow or orange – colors that provide a utilitarian function (reflectivity for better visualization).

Your chances for registering a color mark are increased if you can show the color is uncommon in that particular industry. (Think: the yellow of Kodak, Orange of Home Depot or the blue of Tiffany’s.) When a color is unique in an industry, there is a greater likelihood that a potential customer will make the association between the color and the brand (source of goods). This secondary meaning creates a situation of potential consumer confusion – just what trademark is designed to address. For example, if Polaroid started using yellow packaging consumers might mistake Polaroid film products for Kodak film products because the Kodak yellow has become so well associated with its brand. This would be problematic and trademark is unfair competition can be used to address the issue with the competitor.

If you face these issues, consulting with an experienced trademark attorney will help you discover potential ways to deal with the situation. You may have more than one option available.