Traditionally, courts in the U.S. were unwilling to grant trademark protection to colors. Judges reasoned that the supply of colors was limited and, therefore, granting a trademark to a color would result in a dangerous monopoly to whatever company obtained the trademark. Beyond that, if a color could be trademarked, so the theory went, eventually the supply of colors would be entirely depleted.
The modern rule, however, is that a color can be a trademark. The key Supreme Court precedent in this area is Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995). In a unanimous opinion authored by Justice Breyer, the Court held “that there is no rule absolutely barring the use of color alone” as a trademark. Prior to Qualitex, lower courts had split on the issue of whether color alone could serve as a trademark. The Seventh Circuit had ruled that colors could never be trademarked; both the Eight Circuit and the Federal Circuit had ruled that colors could, in some cases, be trademarked. The Supreme Court’s ruling resolved the split among the lower courts by deciding that colors could be trademarks and elaborating on the necessary conditions for a color to receive trademark protection.
Under the Court’s ruling, a color must have acquired “secondary meaning” in order to be trademarked. “Secondary meaning” is a legal term that means that what is claimed as a trademark has acquired meaning to a significant portion of the public as a trademark signifier. In other words, people–at least a larger percentage–must associate a certain color with a product in order for that color to receive trademark status under federal trademark law.
The facts of Qualitex provide an example of why trademarking a color could be important to a company’s business strategy. Qualitex was in the business of selling pads to dry cleaning firms that were incorporated into dry cleaning presses by the dry cleaning firms. Since the 1950s, it had sold these pads in a certain shade of green. It alleged that, beginning in 1989, Jacobson Products began to sell similarly colored press pads. This caused Qualitex to register its color as a trademark in 1991. The issue before the Supreme Court was whether that registration should be upheld–just because the USPTO registers a trademark does not mean that reviewing courts will ultimately decide that it should have done so.
The Qualitex opinion is notable in one other respect. In discussing the oft-cited concern that the supply of colors was limited, the Court’s rejoinder included an embrace of the doctrine of aesthetic functionality. This doctrine had not universally been embraced by federal courts prior to Qualitex. In fact, it was–and perhaps still is–somewhat of a controversial trademark law doctrine.
Here is how the Court described the functionality doctrine:
“The functionality doctrine prevents trademark law, which seeks to promote competition by protecting a firm’s reputation, from instead inhibiting legitimate competition by allowing a producer to control a useful product feature. It is the province of patent law, not trademark law, to encourage invention by granting inventors a monopoly over new product designs or functions for a limited time, 35 U.S.C. §§ 154 173, after which competitors are free to use the innovation. If a product’s functional features could be used as trademarks, however, a monopoly over such features could be obtained without regard to whether they qualify as patents and could be extended forever (because trademarks may be renewed in perpetuity).”
Under the doctrine of aesthetic functionality, an aesthetic feature of a product can be functional in the sense that it serves a purpose beyond identifying a brand as being sold by a certain company. In other words, the color serves a purpose beyond identifying the source of the good. The Court gave a few examples of what it had in mind, such as the following: ”[T]his Court has written that competitors might be free to copy the color of a medical pill where that color serves to identify the kind of medication (e.g., a type of blood medicine) in addition to its source.”
In many cases, of course, when it comes to color, functionality is unlikely to be a genuine issue. This means that the most likely area of dispute would be whether sufficient consumers associated a color with a product such that the color now had a “secondary meaning” associated with the product.
