On the morning of December 25, several turquoise boxes wrapped with white ribbon lay at the foot of the Christmas tree. Those packages made our faces light up more than usual, because we all knew where they were from, and that they contained special delights. It didn’t matter that a member of our household had been a seasonal employee at Tiffany & Co. in New York City. That color alone pushed our happy buttons.

We associate that shade of blue with the famous jeweler, which began using it for its packaging in the mid-19th Century. When we see a brown delivery truck, we know whose it is. Even without our eyeglasses we know what’s in that bottle of soda with the red label. And when our stomachs are upset, we reach for that bottle of pink liquid on the drugstore shelf. The aforementioned blue, brown and red are trademarks of Tiffany, UPS and Coca-Cola, respectively. But if you’re thinking pink for Pepto-Bismol, think again.

It’s easy to assume that John Deere has a lock on the green color used on all of its machinery. It doesn’t, and there’s a good reason for that. The company does have trademarks on its name, its green and yellow color scheme, and its leaping deer symbol.

Color and trademarks have been a legal battle zone for years. Color combinations to identify brands had long been recognized by US trademark officials (laws vary by country, but there are general consistencies), but they refused to acknowledge single colors as legally protected. That changed in the 1980s when Owens-Corning, which had been manufacturing pink insulation since 1956, won the right in federal court to the color pink for its insulation products.

The key to the shift in legal perspective was the issue of functionality. Features or shapes that are considered functional have a utilitarian purpose. A commonly applied definition is “a product feature essential to the use or purpose of the article or which affects the cost or quality of the article.”

Pink is not a functional part of insulation, so its restriction to Owens-Corning would not inhibit any other manufacturer of similar products from competing in the marketplace. Moreover, the company had established the color pink as its identifying hue for three decades, so now anyone who tried to copy it – and they are still trying – would run afoul of trademark law.

More recently, in a different case, the US Supreme Court restated that a single color can be a brand as long as the public strongly associates the color with the specific product and that the color is in no way functional.

Single color trademarks come with restrictions. If Owens-Corning decides to manufacture a line of women’s clothing under the “Pink” brand, it would run headlong into Victoria’s Secret. If Tiffany declares that buildings or boats cannot be decorated in its shade of turquoise, it would be laughed out of court. The reason is that a color trademark applies only to the specific industry in which the trademark holder does business. Another jeweler would be foolish to use turquoise in its branding, but go right ahead and paint your 1960 Corvette that beautiful shade of blue.

What about John Deere and green? The company has been manufacturing farm equipment since the 1800s, and green seems to be its color. As mentioned, its color scheme is protected, but it can’t own green because it does business in the agriculture industry, and green is the color of just about everything that grows, and therefore is functional. Others in the agricultural equipment business can paint their machines green or use it in their branding because it’s a functional color, symbolizing vegetation.

With the Pepto-Bismol case, the definition of functionality was expanded into new territory by the court. According to US trademark attorney David Lizerbram, “Even a psychological value can be functional. For example, the pink color of Pepto-Bismol is considered functional. A court held that the color was functional because it was ‘soothing’ to patients, thereby providing a psychosomatic effect and therapeutic value in treating upset stomachs. Because the color pink was found in a study to make patients more likely to take the medicine and affected them on a psychological level, the court ruled that Pepto’s competitors needed to use that color in order to compete effectively.”

In an article posted on his web site, Lizerbram says, “As with all trademarks, the color must have a secondary meaning. It must have become meaningful to a significant portion of the public as a unique identifier of the goods or services. Tiffany and UPS can show that when the public sees their shade of blue or brown, in connection with their underlying goods/services (jewelry and delivery services), they immediately think of Tiffany’s jewelry boxes or UPS trucks.”

Here are a few other examples of when a color may or may not be isolated by a trademark.
• Ambrit, a maker of frozen foods, used royal blue in its dessert packaging. Not long after, the food giant Kraft adopted royal blue for its line of similar products. Ambrit took Kraft to court over the use of the color in its packaging but lost the case. The judge ruled that royal blue is a cool color, suggesting coldness to consumers, and therefore the color has aesthetic functionality.

• The Life Savers Company tried to stop Curtiss Candy Co. from using a pattern of colors on its candy wrappers. Life Savers claimed trademark rights on the multi-colored striped theme on its packaging, which it said represented the multi-flavored candies inside. The court disagreed, saying that it was a general practice of the trade for hard candy manufacturers to market their products in packages with multi-colored backgrounds to indicate that assorted flavors were inside.

• Bold, broadly used colors aren’t the only kinds that can be protected. The category now includes accent colors. In 2010, Wolf Appliances sued Viking Range Corp. for using red knobs on its gas stoves. Viking maintained that since both manufacturers marked their products with their company names, the public could not be confused if both had red knobs. Citing “likelihood of confusion,” the court disagreed and upheld Wolf’s complaint. The decision used the example of someone who goes to a dinner party and notices the host’s range with red knobs. That person may later be at a showroom, and without remembering the brand name might think that the Viking range with the red knobs was the one they had seen at the dinner party, when in fact it was a Wolf range.

• The most recent case involves women’s shoes and the competitors Christian Louboutin and Yves Saint Laurent. Louboutin is well known for coloring all of its shoes’ outsoles bright red. YSL chose to do the same, which landed the company in US court as the defendant. A federal appeals court ruled in favor of Louboutin and upheld its existing trademark registration for its red outsoles. One exception is noteworthy: The court made it clear that the protection applies only when the rest of the shoe is a different color or colors. Anyone, therefore, is allowed to make an entirely red shoe.

Lizerbram has some strong advice for companies that might be thinking about seeking protection for a brand color: “If you ever want to try to claim trademark protection for a color, be sure to never, ever, ever suggest in your marketing or advertising materials that the color has any sort of function. Does the green tint in your sunglasses help block harmful UV rays? Well, then it can’t be a trademark. Will kids be happy to swallow this medicine because of its fun bubblegum color? No trademark for you. This is one of those situations where the marketing/advertising and legal sides of a business need to be fully in sync from Day 1. There’s no going back once you’ve shown that your color serves a real world purpose and isn’t merely ornamental.”



The author is president of Jack Kenny Media, a communications firm specializing in the packaging industry, and is the former editor of L&NW magazine. He can be reached at [email protected].