International Trademarks: Japan has Embraced Color

by Revision Legal

Trademarking colors has been a complex and confusing legal history question. Color has always been allowed as part of the mark design, but for many years trademarking was denied for stand-alone colors and schemes. Even now the TMEP begins from the principle that “[c]olor marks are never inherently distinctive.” The US Supreme Court finally overcame its skepticism about whether a single-color mark could qualify for Lanham Act protection in Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995).

As for international trademarks, as reported recently, Japan’s Patent Office (“JPO”) has just this year issued trademark registrations for color marks. As reported, in March 2017, “Japan’s Ministry of Economy, Trade and Industry announced that it has approved the trademark for the blue-white-black package color of the Mono eraser and the gold-green-red color scheme of 7-Eleven stores.” These were the first two color marks allowed by the JPO. While 7-Eleven stores have lost substantial market share in the US, the stores are ubiquitous in Japan. Prior to 2015, the JPO did not allow stand-alone color marks. Any color was considered part of the design element.

Trademarking Colors and Color Schemes

Under the Lanham Act, a mark can be registered if the mark serves to signify a commercial source for a given good or product. The first color mark in the United States was for the famous pink used in Owens-Corning fiberglass home insulation. See In re Owens-Corning Fiberglas Corp., 744 F.2d 1116 (Fed. Cir. 1985). The Federal Circuit held that the pink color of the insulation had acquired secondary meaning and served as a distinguishing mark to consumers identifying THIS insulation as Owens-Corning insulation. Owens-Corning presented evidence that it has been using the pink color for 29 years, that it had advertised using the color, that it intentionally used the color in advertising in order to create consumer awareness and Owens-Corning provided survey evidence showing over 50% of the relevant consuming public associated the pink insulation with Owens-Corning. This method used to create and then legal defend a color mark is similar to the process of creating and defending a scent mark which we discussed here.

Since the Owens-Corning case and the Qualitex case, there have been many companies that have successfully registered color marks. See news article here.

Some of those include:

  • Tiffany blue
  • University of North Carolina blue
  • University of Texas burnt orange
  • Verizon/T-Mobile magenta
  • Home Depot orange
  • UPS brown
  • 3M Post-It canary yellow
  • John Deere green and yellow
  • Caterpillar yellow
  • Louboutin red soles and heel for women’s shoes (but only with a contrasting color)

Verizon/T-Mobile recently successfully defended its magenta trademark against a competitor in T-Mobile US, Inc. v. Aio Wireless LLC, 991 F. Supp. 2d 888 (SD Tex. 2014).

Legal Standard

Under Qualitex, a color alone can meet the Lanham Act requirements for use as a trademark if the color acts “a symbol that distinguishes a firm’s goods and identifies their source, without serving any other significant function.”

Courts have developed several tests and factors to be considered in determining if a color mark satisfies the Qualitex standard. The Fifth Circuit, for example, looks to these factors:

  • Length and manner of use of the mark or trade dress
  • Volume of sales
  • Amount and manner of advertising
  • Nature of use of the mark or trade dress in media
  • Consumer-survey evidence
  • Direct consumer testimony and
  • An infringer’s use or proposed use of the color

See Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526 (5th Cir.1998). Other federal circuits use similar lists.

Factors 3 and 4 are often crucial. To make a color distinctive, a company often must market and advertise “to the color”; that is, direct the consumer’s attention to the fact that the color is being used as something to distinguish THIS or THESE products. United Parcel Post, for example, extensively advertised with the slogan: “What Can Brown Do For You?” Similarly, in the T-Mobile case mentioned above, T-Mobile presented evidence that it used the magenta color in virtually every aspect of its public marketing and communications. Advertising campaigns prominently featured the color and, like UPS, T-Mobile tailored advertising campaign to its color: e.g., its “Vote Magenta” advertising campaign that ran during election season, its “Magenta Saturday Sale” campaign, and “Magenta Deal Day” campaigns.

Customer survey evidence can be challenging. Good survey evidence will target the relevant customer base. T-Mobile was successful in its case. By contrast, consumer survey evidence was rejected in Amstar Corp. v. Domino’s Pizza, Inc., 615 F.2d 252 (5th Cir. 1980) because the survey done by the maker of Domino sugar “neglected completely defendants’ [Domino’s Pizza’s] primary customers: young, single, male college students.” As such, that survey was of little value on the issue of consumer confusion.

Functional Color Mark are Not Allowed

Color marks that serve a function are not allowed. A color is functional if it yields a utilitarian or functional advantage, for example, yellow or orange for safety signs. See TMEP § 1202.05(b). A famous example of a competitive/financial advantage was the use of the color black on boat propeller motors. The color mark was rejected because the color served the function of making the motors ascetically compatible with many boat colors and the black color made the motor look smaller. Such provided competitive advantages and, therefore the color was functional. See Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527 (Fed. Cir. 1994). Similarly, if there is a competitive need for the color, then a color mark will be rejected. For example, because florists use the color black for various occasions like Halloween and funerals, the color black is not trademarkable for packaging of floral products. Likewise, Louboutin’s red mark was limited to the sole and heel of the shoe as long a the color was matched with another contrasting color. Otherwise, competing shoe makers could not offer completely red shoes.

A financial or competitive advantage might also be found if a color is the natural by-product of the manufacturing process. If such a color were trademarked, a competitive disadvantage would result since others in the market would be required to change their manufacturing process.

By contrast, pink fiberglass insulation does not violate any of these principles. The color is not a byproduct of the manufacturing process, it add nothing to the function of insulation as insulation and, since insulation is behind the walls, the color has no ascetic competitive value.

Brand Strategy Opportunities

“A new type of trademark is expected to play a major role in corporate brand strategy as a means of disseminating various brands other than languages,” explained Sunao Sato, director of JPO’s trademarks division. Since JPO opened possibilities for getting a trademark for signature-branding elements like color, they’ve been deluged with over 1,500 applications.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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