The Lanham Act's Role in Coloring Trademark Law

Did the Lanham Act always protect color trademarks? The law defines a trademark as any word, name, symbol, or device, or any combination thereof, used by a person to identify and distinguish their goods from those manufactured or sold by others and to indicate the source of the goods. But does it allow colors to be trademarked? Until the 1995 landmark case of Qualitex Co. v. Jacobson Products Co. 514 U.S. 159 (1995), It was in this case that the U.S. Supreme Court expanded the definition of the Lanham Act to include colors, provided they meet certain criteria. The court found that "a color may sometimes meet the basic legal requirements for use as a trademark and that respondent Jacobson's arguments do not justify a special legal rule preventing color alone from serving as a trademark (and, in light of the District Court's here undisputed findings that Qualitex's use of the green-gold color on its press pads meets the basic trademark requirements), we conclude that the Ninth Circuit erred in barring Qualitex's use of color as a trademark." See Qualitex Co. Click here for the full Qualitex case.

Challenges of Distinctiveness and Functionality in Color Trademarks

For a color to be trademarked, it must pass two critical tests. First, the color must be distinctive, or have a "secondary meaning," in the minds of consumers. This means that when consumers see the color used in a specific context, they immediately associate it with a particular source or brand. Second, the color must not be "functional" – that is, the color cannot be essential to the use or purpose of the product or affect the cost or quality of the product. This ensures that trademarking a color does not confer a competitive advantage by restricting access to functional features of a product.

Despite these clear guidelines, not all colors can be trademarked. Colors that are considered functional and therefore ineligible for trademark protection typically include those that have a practical purpose beyond brand identification. For example, fluorescent orange used on safety equipment is considered functional because it serves a safety purpose, making it visible in various environments. Similarly, green for night vision goggles is functional because it leverages the human eye's sensitivity to green light for optimal visibility in low-light conditions.



Typical standard character trademarks require very little information, while a color special form trademark requires you to submit a JPG version of the trademark, a color claim, and a description of the trademark that includes where within the trademark the colors are located. Once a color mark is submitted, you cannot change the colors of the trademark or materially alter the trademark you submitted.  Specific application requirements can be found on the USPTO trademark website.

The Power of Color in Trademark Branding

Trademarking a color is a strategic move for brands aiming to solidify their market presence, protect their identity, and boost recognition. A trademarked color can instantly set a brand apart. It makes the color easily identifiable to consumers and differentiates it from competitors. This exclusive right prevents others from using similar shades, protecting the brand against confusion or dilution of its identity. Beyond the competitive edge in crowded markets, a unique color can significantly impact consumer perception, aligning with the brand's values and evoking specific emotions. It also plays a crucial role in marketing, ensuring consistency across materials and reinforcing brand loyalty. Ultimately, trademarking a color strengthens a brand's visual identity, contributing to its overall value and appeal in the marketplace.

Trademark Success Stories:

• T-Mobile's Magenta: A vibrant shade that has become synonymous with the brand's identity in the telecommunications sector.

• Tiffany & Co.'s Robin's Egg Blue: This distinct blue is instantly recognizable as part of the luxury jeweler's brand, evoking a sense of exclusivity and elegance.

• UPS's Brown: A color that signifies reliability and efficiency, perfectly embodying the courier and logistics company's brand ethos.

• Cadbury Purple: Cadbury successfully trademarked a particular shade of purple (Pantone 2685C) used in the packaging of its Dairy Milk chocolate bars in some jurisdictions.  Cadbury's color use dates back to 1914 as a tribute to Queen Victoria's favorite color.

• John Deere Green: The agricultural machinery manufacturer John Deere has trademarked the shade of green used on its equipment since the 1960s.

Filing Color Trademarks in the USPTO

Trademarking a color with the United States Patent and Trademark Office (USPTO) is a detailed process that blends branding with legal strategy. Here's a condensed overview:

• Application Preparation: Applicants during the trademark application process must gather evidence showing the color has a "secondary meaning" — that consumers recognize the color as representing their brand — and demonstrate the color's non-functionality, ensuring it doesn't provide a competitive advantage in use, quality, or cost.

• Submission and Examination: The application, including evidence of secondary meaning and non-functionality, is submitted to the USPTO. A trademark examiner reviews the application for compliance with legal standards, including no conflicts with existing trademarks.

• Approval and Rights: If the examination is successful, the USPTO grants approval, giving the trademark holder exclusive rights to use the color for the listed goods or services. This step is crucial for legal protection against infringement.

• Maintenance and Enforcement: Post-approval, the holder must actively use, monitor, and enforce the trademark, protecting it against unauthorized use and maintaining its association with the brand.

Once trademarks have been registered, protecting them becomes vital to maintain their value and the brand’s integrity. This protection involves actively monitoring the market for any unauthorized use or infringements that could dilute the trademark's distinctiveness or mislead consumers. Brands should enforce their rights through legal channels when necessary, including sending cease and desist letters or pursuing litigation against infringing parties. Additionally, maintaining the trademark requires regular use in commerce, as well as filing renewals with the relevant trademark office to ensure the registration remains active. By taking these steps, businesses can safeguard their trademarks, ensuring they continue to serve as powerful symbols of their brand's identity and reputation in the marketplace. Our trademark specialists can assist you in filing color trademarks.