Tag: functional trademark

When Can You Claim A Color As Your Trademark?

In its recent decision in Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., the Second Circuit held there was no “per se rule that would deny protection for use of a single color as a trademark in a particular industrial context.”  The Court found that the single color red on the sole of a women’s shoe that contrasted with the color on the upper portion of the shoe could be protected as a trademark in the fashion industry. A Federal District Court in California ruled recently, that a company’s use of the color orange for markings and text on its medical syringe could not be protected as a trademark since the color was “functional” when applied to that product. It determined that the color orange was functional in the medical industry because it signifies that a device is for oral use. So, how does this color-as-a-trademark work?

Many companies have successfully obtained trademark protection for a single color, for example,  United Parcel Service’s registration for the color brown for transportation and delivery services, Reg. 2901090; Tiffany’s multiple registrations for a particular color of  blue used on bags, boxes and various other products and services, Reg. Nos. 4177892, 2359351, 2416795, 2416794, 2184128; 3M’s registrations for yellow as a trademark for telephone maintenance instruments and POST-IT® notes, Reg. Nos. 2619345, 2390667; and Owens Corning’s registrations for the color pink for masking tape, insulation, and other products used in the building and construction industry, Reg. Nos. 3165001, 2380742, 2380445, 2090588, 1439132.

In Qualitex Co. v. Jacobson Prods. Co., the U.S. Supreme Court held that color alone may be protected as a trademark, “when that color has attained ‘secondary meaning’ and therefore identifies and distinguishes a particular brand (and thus indicates its ‘source’).” The Court held color may not be protected as atrademark when it is “functional”. There are two types of functionality: “utilitarian” and “aesthetic.” A color is functional under the utilitarian test if it is essential to the use or purpose of the product, or affects the cost or quality of the product.  A  color is aethestically functional if its exclusive use “would put a competitor at a significant non-reputation-related disadvantage”.   If color “act(s) as a symbol that distinguishes a firm’s goods and identifies their source, without serving any other significant function,” it can be protected as a trademark. So, how do you know if a color you are using or plan to use in your business can be protected as a trademark to the exclusion of your competitors?

Protecting color as a trademark can be a very powerful advantage if the color has no particular function or meaning in the industry in which it is used. However, in order to claim color as a trademark, the color must be showcased as a source indicator for products or services in its marketing campaigns and advertising materials. Good examples of this are UPS’s reference to itself as “brown” in its advertising and Owen Corning’s blatant use of the color pink in its advertising.  Both companies very clearly highlight a color in their ads and identify it strongly with their respective products and services. This type of careful and clever planning, implementation, and marketing strategy is critical to developing a strong, unique and highly recognized color trademark.

Whatever color is used, it must not be “functional” in any respect in the industry in which it is used. Various “functionality” tests have been developed by the courtsover time, and  some include:

  • whether the design (or color) yields utilitarian advantage
  • whether alternative designs (or colors) are available
  • whether advertising touts utilitarian advantages of the design (or color), and
  • whether the particular design (or color) results from a comparatively simple or inexpensive method of manufacture.

Functionality is evaluated within the context of the specific industry in which the goods or services for which color is claimed as a trademark will be offered. Had the markings on the medical devices been red instead of orange in the case before the Federal District Court in California mentioned above, it is possible that there would not have been a finding of functionality. Thus, know your industry before selecting a color on which to focus your marketing and advertising efforts.

Thinking outside the box when selecting trademarks and planning marketing strategy is critical in any industry. The explosion of social media and changes in traditional advertising and marketing methods have changed the way products and services are recognized. Companies need more unique and  nontraditional approaches for a competitive edge. Promoting non-traditional trademarks such as a color, or other unique source indicators such as sounds, scents, flavor, and product shapes, may provide a fresh method to attract and entice a wider audience.

So, get out those color wheels and start plotting a new course.

©1994-2012 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.

Hershey Thinks Outside the Box (or the Candy Wrapper) in Seeking Trademark Protection for a Product Shape

The National Law Review recently published an article by Susan Neuberger Weller of Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. regarding Shape Trademarks:

On July 2, 2012, the U. S. Patent and Trademark Office Trademark Trial and Appeal Board (“TTAB” or “Board”) granted Hershey’s request to register the design and shape of a chocolate bar as a trademark on the Principal Register. The design was described as “a configuration of a candy bar that consists of 12 equally-sized recessed rectangular panels arranged in a four panel by three panel format with each panel having its own raised border within a large rectangle.” The drawing for the mark is set forth below:

The issue in “product configuration” trademark cases is whether the design features sought to be protected are “functional”. If the overall design is functional, trademark protection is barred. In this case, the TTAB held that although the rectangular shape of the entire candy bar and the individual rectangular shapes scored within the bar were functional, since they made it more convenient to easily divide the bar into equal pieces, the overall design, when considered in its entirety, was not purely functional. Rather, the Board determined, based on the evidence presented that reflected a wide variety of shapes and decorative designs used for candy bars, that the particular combination of recessed rectangles with a raised border in the Hershey bar was not functional and, therefore, could be protected as a trademark.

The second issue the Board was required to consider was whether the product design had “acquired distinctiveness”. Product designs and configurations are not considered “inherently distinctive” as are many other types of trademarks. Thus, in order to be fully protected as a trademark and registered on the Principal Register, Hershey was required to demonstrate that relevant consumers considered the product design to be a source identifier. There is no specific rule or test for establishing that a mark has become distinctive. Evidence can consist of consumer recognition surveys, evidence as to the length of time a mark has been in use, sales revenue of goods bearing the mark, advertising expenditures to promote goods bearing the mark, and evidence that the product configuration was promoted in advertisements as a source indicator. Hershey’s submitted all of these types of evidence to meet its burden of proof. In addition, Hershey’s also provided evidence that a third party attempted to copy the design of the candy bar to use as the shape of a brownie baking pan. The Board found that all the evidence demonstrated that the design above had acquired distinctiveness and could be registered

Product configuration marks are not new. There are trademark registrations on the Principal Register for many product configurations, such as:

A Coca-cola bottle  Reg. No. 3232602

A Perrier bottle Reg. No. 1398744

Original Ideas’ barbecue grill Reg. No. 3987743

Emerson Electric’s thermostat Reg. No. 3195948

and many others.

The Hershey bar configuration has been in use since 1968, yet Hershey did not make any attempt to register the mark as a product configuration until recently.  Gaining a competitive edge in any industry, particularly in a slow economy, is essential. As Hershey’s demonstrated, it can be beneficial to think creatively and a bit more “out-of-the-box” when it comes to your intellectual property assets.  Particularly in a down economy, some may be tempted to copy a successful competitor rather than spend time and money on developing original ideas and creations. Accordingly, companies should carefully consider obtaining protection for the intellectual property assets they currently use and own, whether by trademark, copyright, and/or design patents, and for policing the market to ensure that their valuable properties are not being used by unauthorized third parties. Moreover, there may be licensing opportunities that could provide a revenue stream if appropriate protection has been obtained.

Today, it is a candy bar design. Tomorrow, it could be your existing product’s design. Think about it.

©1994-2012 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.