The United States Supreme Court has held that a color can be registered as a trademark upon presentation of evidence showing that the color has become associated with a particular product and identified a particular source for that product. Circuit Courts of Appeal that had previously considered this issue had issued conflicting rulings on whether colors alone could be registered as trademarks.

The Court's Decision

On March 28, 1995, the U.S. Supreme Court handed down its decision in Qualitex Co. v. Jacobson Products Co., holding that colors can be registered as trademarks. Qualitex had used a shade of "green-gold" for the press pads it manufactured and sold to dry cleaners, and sued Jacobson for unfair competition when Jacobson began to use a similar color for its press pads. While this lawsuit was pending, Qualitex filed for and obtained a trademark registration for the green-gold color from the United States Patent and Trademark Office. Qualitex then amended its lawsuit to allege infringement of the registered green-gold color by Jacobson. "If a shape, a sound, a fragrance, can act as symbols, why... can a color not do the same?"

Qualitex won its case in the district court, but lost on appeal when the Ninth Circuit Court of Appeals rules that colors alone could not be registered as trademarks under federal law. Other courts had previously ruled that color alone, such as the color pink for fiberglass insulation, could be registered as a trademark. The Supreme Court agreed to hear an appeal to settle the color registration issue.

The federal trademark registration statute defines a trademark as "any word, name, symbol, or device, or any combination thereof [used]...to identify and distinguish...goods...from those manufactured or sold by others and to indicate the source of the goods...." The Supreme Court noted that Congress used broad language in enacting this definition, and that nothing in either the statutory language or the principals of trademark law that guide the Courts and the Congress in dealing with trademark matters prevented color from being included within the "universe of things that can qualify as a trademark." The Court recognized that shapes (e.g., a Coca-Cola bottle), sounds (the three chimes of NBC), and fragrances (the scent of plumeria blossoms on sewing thread), have been registered previously as trademarks and then asked: "If a shape, a sound, a fragrance can act as symbols, why, one might ask, can a color not do the same?"

The Court further acknowledged that where a color has achieved "secondary meaning" -- a term of art signifying that the color (although not intrinsically distinctive of a particular source) has through use become associated in the minds of consumers with a particular product coming from a particular source --there were no theoretical reasons to object to registration. The Court commented that the use of trademarks -- and trademark law in general --function to reduce the cost of goods by encouraging the production of quality products, and by discouraging copiers who aim to capitalize on the goodwill of the trademark owner while selling inferior goods. The Court noted that colors could perform this function as well as other types of marks.

Jacobson presented four arguments why colors alone should not be registered as trademarks: shade confusion, color depletion, prior Supreme Court decisions, and other available protections under federal law for colors and color schemes. Each of these arguments had led some courts and commentators to the conclusion that color alone should be denied trademark registration. The Court rejected each of these arguments. It noted that courts and the Trademark Office already draw distinctions between differing marks that may look similar or sound similar and could not find any reason to believe that courts or the Trademark Office would have any greater difficulty drawing distinctions between color shades. It also disposed of the argument that the available colors would soon be depleted, noting that where such "color depletion" actually occurred, the colors would likely be functional and therefore not subject to protection as a trademark.

The Supreme Court distinguished many of the earlier decisions as having been handed down before enactment of the present trademark registration statute. The present law, as amended, had broadened the scope of trademark protection according to the Court. It also observed that the 1988 revision to the statute had been passed into law by a Congress fully aware of a case law holding that colors could be registered, and with a legislative history indicating that trademark status should be extended to colors. Finally, the fact that other protections are available for color under federal law, such as unfair competition law, was not persuasive since trademark registration provided protections that the other federal statutes did not, such as constructive nationwide notice of ownership of the trademark.

The decision of the Ninth Circuit Court of Appeals was reversed. The effect of the Court's decision in the Qualitex case was to reinstate the federal district court's judgment in favor of Qualitex against Jacobson for an injunction forbidding Jacobson's use of the registered color trademark, for damages for Qualitex's lost profits, and for costs. The impact of this decision for all other businesses across the United States is more profound.

What Does This Mean For Your Business?

You should review the appearance of your products and packaging (also known as "trade dress") for possible color trademarks. If a single color or particular color scheme has been used for your products or their packaging for some time, and is an arbitrary feature -- i.e., the color is not a necessary aspect of the product or packaging -- you may be entitled to obtain a trademark registration for them. To protect the good will and the rights that you have developed in those colors, you should file an application for registration of the colors as a trademark as soon as practicable. As the Supreme Court observed in its opinion, trademark registration will provide your business with protections beyond what is available by relying on your common law and statutory rights in a product's trade dress. To obtain a trademark registration for a color, proof that your particular color has achieved "secondary meaning" must be provided. This can be shown, for example, by affidavits and survey evidence.

In view of the Supreme Court opinion, a proactive color trademark strategy would also be appropriate. Is there a particular color or color scheme that would enhance the marketability of your product and perhaps become favorably associated in the consumer's mind with your business? If so, adding a particular color or color scheme to the product or packaging to enhance the ability to register a color trademark in the future could be a wise business move now.