Reese's And Home Depot Orange Logos

If the Hue Fits: The Intellectual Protection of Color

By Kallee M. Hooley
University of Iowa College of Iowa
Juris Doctor Candidate, 2024

Can you tell the difference between Reese’s orange and Home Depot orange? Or the difference between Louboutin red and Coca-Cola red? Do the differences matter? Turns out, they may.

Corporations are diligent in protecting their intellectual property, and rightfully so. Trademark, copyright, and patent applications are constantly being filed by businesses seeking to protect their brands and other intellectual property. Patents are granted to protect inventions, whereas copyrights are granted to protect creative works such as music or art. Trademark registrations are requested by businesses looking to protect their logos, brand names, and, in some cases, their colors. The federal Lanham Act defines a trademark as “any word, name, symbol, or device, or any combination thereof” that is used to “identify and distinguish the goods” from those of others.

Until 1995, companies were precluded from obtaining trademarks over colors. The U.S. Supreme Court’s decision in Qualitex Co. v. Jacobson Products Co. that year, however, opened the door for businesses to begin trademarking colors identifiable with their brands. Today, a color may be trademarked so long as the following conditions are satisfied:

  1.     The color distinguishes the product from other competitors, and;
  2.     The color does not serve a functional purpose

How Does Color Help Distinguish Brands from Those of Competitors?
A color must have a “secondary meaning” in connection with a brand in order to qualify as a trademark. The color, in relation to the brand’s goods or services, must be distinctly recognizable by the public and distinguishable from competitors. For example, the wide association with luxury jewelry and little blue boxes was enough for Tiffany & Co. to obtain a trademark over the famous “Tiffany Blue.”

Even if a brand is widely associated with a particular color however, a trademark will not be granted if the color is already widely used in that industry. In 2017, General Mills was denied a trademark over the color yellow in relation to their boxes of Cheerios cereal. While General Mills has used yellow packaging since 1945, the court ruled that the color yellow alone was not enough to distinguish Cheerios from other cereal brands. Many cereal brands, such as Post Honeycomb and Kellogg’s Corn Pops, also utilize yellow packaging for their goods.

What Constitutes a Functional Purpose for Color?
A color must not serve a functional purpose in order to qualify for trademark status. If a color is essential to the product or services in question, then it is deemed to be functional. In order to determine functionality, some courts will evaluate whether competitors would be significantly disadvantaged by trademarking the color. For example, the green color of wine bottles is functional because it helps prevent sunlight and UV damage to the wine. Similarly, the bright orange color often found on safety vests is functional because it increases visibility in order to protect the persons wearing them. Both colors, in relation to these products, serve functional purposes that would highly disadvantage competitors in these industries.

Conclusion
In conclusion, there are several factors that companies need to consider before applying for a trademark registration of a color. The color, or combination of colors,  in question must have acquired distinctiveness separate from that of other brands within the industry. The color must be widely synonymous with the brand’s products or services in order to distinguish itself from competitors. Additionally, the color must not serve a functional purpose for the product or service. To increase the chances of trademarking a color, brands should seek to be creative in their product designs, looking into colors or color combinations that aren’t already widely used in their industry. Additionally, brands should seek to widely use and promote their chosen color(s) in advertisements and packaging, increasing the public’s association of the color with the brand.

 

Our 2022 summer associate program is supported by:
Bar Plan logo