How Brands Can Effectively Demonstrate Distinctiveness of a Color in Trademark Litigation.

By Cara O'Hanlon

Background: Color Marks

Traditionally, registered trademarks in the United States could only be logos, brand names, and slogans that were found distinctive and capable of serving as source identifiers.1 Courts maintained that color is inherently generic and therefore incapable of being distinctive or acting as a source identifier.2 The Lanham Act broadened the definition of trademarks to “includ[e] any word, name symbol, or device, or any combination thereof.”3 This paved the way for non-traditional marks such as sound, scent, and texture.4 The Supreme Court in Qualitex recognized that while colors are not innately distinctive, they can become eligible for registration if consumers link that color with a particular brand.5 The following brands have secured color marks by successfully proving that a specific color has reached distinctiveness because consumers widely associate these colors with their brand:

● Tiffany & Co.’s “Tiffany Blue,”
● Christian Louboutin’s “Red Sole Mark,” 6 UPS “Pullman Brown” for trucks and uniforms,
● T-Mobile Magenta,
● Target Red, and
● Home Depot Orange.7

Although color marks are now permitted for registration, acquiring these marks is much more complex than typical word or logo marks.8 Traditional marks are often inherently distinctive. For example, the brand name “Kodak” was coined by the photography company.9 Kodak has exclusive rights to use this mark because it had no meaning before they created it and it is exclusively associated with their brand.10 Contrastingly, a color is not inherently associated with a certain brand, but rather comes to be associated with that brand through its use in commerce, developing distinctiveness over time.11 Further, courts have established additional requirements to register a color mark to prevent potential anticompetitive effects. Here, we will delve into common challenges brands face to secure color marks and consider how brands can strengthen their efforts to protect them.

Registering a Color Mark: Requirements

Demonstrating that a particular color has gained distinctiveness requires a brand to provide considerable evidence that the color has come to represent its brand. Color marks also may not serve any other significant purpose. 12 The Court in Qualitex held that if a color serves an essential functional purpose, such as bright colors used on safety items because they are easier to see, it cannot be protected. 13 The functional purpose doctrine prevents a color mark from having any unfair anticompetitive effects if brands were able to register “naturally occurring or desirable characters” for certain products. 14 The use of a color for solely ornamental purposes also may not be protected, as this would “restrain artistic freedom and fair competition,” especially in “creative industr[ies]” that are “largely dependent on color.” 15 Courts typically look to the following factors to evaluate distinctiveness: “1. Advertising expenditures, 2. Consumer studies linking the mark to a source, 3. Unsolicited media coverage of the product, 4. Sales success, 5. Attempts to plagiarize the mark, and 6. The length and exclusivity of the mark’s use.” 16

This article makes the following suggestions for brands to demonstrate distinctiveness of a color mark:

  1. Brands should remember the importance of primary evidence from consumers to demonstrate that the public links the color to the brand.
  2. Brands should carefully consider the methodologies behind direct evidence to avoid challenge in court.
  3. Brands should make efforts to gain widespread recognition of color marks to demonstrate acquired distinctiveness among the general public.
  4. Brands should prominently feature the intended color mark in advertisements to demonstrate significant efforts to obtain distinctiveness.

Primary Evidence of the Public’s Perception, while Necessary, is susceptible to Challenge in Court

Earlier this year, Champagne brand Veuve Clicquot lost before the European Union Intellectual Property Office against retail chain Lidl.17 Lidl had filed an action arguing Veuve’s orange color mark for the labels and packaging of champagne bottles lacked distinctiveness.18 The Court emphasized that direct evidence on the public perception of the mark is needed to establish distinctiveness, and this must be proven in all member states of the EU to gain protection.19 When providing evidence for Portugal and Greece, Veuve Clicquot provided extensive information on sales, advertising material, and duration of use. However, this was insufficient because it did not demonstrate whether the public linked the color to the brand.20 The court found that “sales figures and advertising material can be regarded only as secondary evidence which may support, where relevant, direct evidence of distinctive character acquired through uses.”21 For brands, this holding serves as a reminder of the importance of direct evidence, such as surveys or consumer testimonials, a principle that also holds in U.S. courts.

To prove that the public associates a specific color as an indicator of source, brands often utilize survey evidence.22 However, such evidence is highly susceptible to challenge in court.23 For example, earlier this year, the Japan IP High Court, which requires a high level of acquired distinctiveness for registration of a color mark, critiqued a study provided by Hermes regarding whether their orange color mark for packaging acquired distinctiveness.24 Hermes provided evidence from a market research study consisting of high-income participants in their 30s to 50s “who expressed interest in bags, accessories, watches, cosmetics, or perfume and had purchased either of these items within the past six months.”25 39.2% of respondents answered Hermes when shown three Hermes boxes, and 44% chose Hermes from ten choices.26 The court found this evidence insufficient and challenged the survey’s methodologies, finding that the demographic surveyed was far too limited.27 Consequently, the survey evidence failed to prove distinctiveness among the general consumers, because the recognition rate would likely be much lower than 39.2% if the general public was surveyed. Similar critiques of survey evidence are common in the United States in cases surrounding color marks, weakening its probative value in court.28 When presenting survey evidence in court, brands should carefully consider the methodologies used to demonstrate that a mark has acquired secondary meaning effectively. Additionally, brands should explore other methods of primary evidence, such as testimony directly from customers, which are less common but have shown to be effective.29 For example, the court in In re Ideal Industries, Inc. was “favorably impressed with letters from professional customers of the applicant that tended to show customers recognize the proposed mark as a trademark.”30

Marketing Efforts Should Cater to a Diverse Audience to Acquire Widespread Brand Recognition

The dismissal of the Hermes appeal by the Japan IP High Court also underscores the importance of developing a widespread association between the intended color mark and the applicant. The court noted that because the desired mark applied to products commonly purchased by the general public, Hermes needed to demonstrate that the mark had acquired distinctiveness among the general public.31 Luxury brands that traditionally tailor marketing efforts to a specific clientele, such as affluent shoppers, may need to reconsider their strategies when seeking protection for a color mark. While focusing these efforts on specific market areas may typically be more profitable, securing a color mark will likely require brands to build recognition among a more significant percentage of the market.

Brands Should Prominently Feature the Color in Advertisements to Obtain the Required Association with the Brand

Brands often provide evidence of promotional efforts and advertising costs to demonstrate acquired distinctiveness. However, such evidence lacks probative strength unless a brand can explain how these efforts are specifically attributable to the specific mark at issue. Courts have established that “even highly substantial advertising and promotional expenditures… are not sufficient to support a finding of acquired distinctiveness.”32Brands must demonstrate an effort to build an association with its source among consumers.33 For example, when Christian Louboutin obtained protection for their red outsoles, the court recognized that the brand made apparent efforts to center their expenditures around the red sole mark, to the extent that the red outsole itself became “the center of much media attention” and gained “a high level of notoriety.”34 Courts have denied trademark protection where advertisements did not prominently feature the mark, such as in Johnson & Johnson v. Actavis Group HF, where the court held that advertisements “are only relevant… to the extent they feature the… [m]ark and… serve to link” the mark with the brand.35 The court found that the brand’s advertising materials did not “always emphasize or even include” the “Gold Mark” for antibiotic ointment in a gold box, and thus failed to show efforts to establish a link between their brand and the intended color mark.36 This decision stressed that advertising materials are only relevant to acquire distinctiveness where “the color is a prominent feature in virtually every advertisement.”37

Conclusion

The strategies outlined in this article highlight the necessity for collaboration between legal and marketing teams. Integrating legal counsel throughout the branding process can ensure that brands center their desired marks in marketing and tailor their efforts to increase trademark recognition among the general public, as part of a comprehensive strategy to demonstrate efforts to obtain distinctiveness of a color mark. Brand counsel can also utilize partnerships with marketing to monitor these efforts while compiling direct and robust evidence that will meet the high standards required to defend these marks in court.

  1. Vanja Vidackovic, Christian Louboutin v. Yves Saint Laurent: “Trademark Use” Stomps Its Red Heels on “Likelihood of Confusion”, 23 DePaul J. Art, Tech. & Intell. Prop. L. 463 (2013)
  2. Id.
  3. 15 U.S.C. §1127
  4. Dariush Adli, Exploring Non-Traditional Trademarks, L.A. Law., April 2022, at 10.
  5. Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995)
  6. Nicolette Shamsian, Trademarking a Color in the World of Fashion Is Easier Said Than Done, Above the Law (July 11, 2023, 11:17 AM), https://abovethelaw.com/2023/07/trademarking-a-color-in-the-world-of-fashion-is-easier-said-than-done/.
  7. Aine Cain, 10 Colors That Might Get You Sued, Business Insider (September 29, 2019, 11:00 AM), https://www.businessinsider.com/colors-that-are-trademarked-2012-9.
  8. Shamsian, supra note [4].
  9. Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 210 S. Ct. 1339, 146 L. Ed. 2d 182 (2000)
  10. Id.
  11. Id.
  12. Qualitex, 514 U.S. at 165; See also Vidackovic, supra note [1], at 465.
  13. Id.
  14. James L. Vana, Color Trademarks, 7 Tex. Intell. Prop. L.J. 387 (1999).
  15. Id.
  16. Second Circuit Rules That a Single Color Can Be a Trademark in the Fashion Industry, Loeb & Loeb LLP (Sept. 8, 2012), https://www.loeb.com/en/insights/publications/2012/09/second-circuit-rules-that-a-single-color-can-be-__.
  17. Judgment of 6 March 2024, Lidl Stiftung & Co. KG, T-652/22, EU:T:2024:152; See also Hannah Vioque, Veuve Clicquot Loses Fight With Lidl Over Orange Square TM, Law360 (Mar. 6, 2024), https://casetext.com/analysis/second-circuit-rules-that-a-single-color-can-be-a-trademark-in-the-fashion-industry?sort=relevance&resultsNav=false&q=.https://www.law360.com/articles/1810508/veuve-clicquot-loses-fight-with-lidl-over-orange-square-tm.
  18. Id.
  19. Judgment of 6 March 2024, Lidl Stiftung & Co. KG, T-652/22, EU:T:2024:152; An EU trademark may consist of any signs, including colors, provided that the mark is capable of (a) distinguishing the goods or services of one undertaking from those of other undertakings, and (b) being represented on the Register of the European Union trademarks, in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afford to its proprietor. 2017 O.J. (L 154/8).
  20. Id.
  21. Id.
  22. Janet Hoek & Philip Gendall, Colors, Brands, and Trademarks: The Marketing (and Legal) Problems of Establishing Distinctiveness, 50 J. Advert. Res. 316 (2010).
  23. Id.
  24. Reiwa 4(Gyo-ke)10089; Japanese Court Denies Hermès Trademark Registration, Olarte Moure (May 3, 2024), https://www.olartemoure.com/en/japan-denies-hermes-trademark-registration/.
  25. Masaki Mikami, JPO Appeal Board Rejects Hermes Packaging Colors, Marks IP Law (Mar. 27, 2023), https://www.marks-iplaw.jp/rejection-hermes-packaging-colors/.
  26. Id.
  27. Id.
  28. See Hoek & Gendall, supra note 21.
  29. Vana, supra note 8, at 398.
  30. In re Ideal Industries, Inc., 508 F.2d 1336, 1340, 184 U.S.P.Q. (BNA) 487, 490
  31. Masaki Mikami, Japan IP High Court Said No to Registering the Color of Hermes Packaging, Japan Trademark Review (Apr. 21, 2024), https://blog.marks-iplaw.jp/2024/04/21/japan-ip-high-court-hermes-packaging-color/.
  32. Diane E. Moir, Trademark Protection of Color Alone: How and When Does a Color Develop Secondary Meaning and Why Color Marks Can Never Be Inherently Distinctive, 27 Touro L. Rev. 407 (2011),https://www.tourolaw.edu/lawreview/uploads/pdfs/27_2/9.pdf.
  33. Id.
  34. Vidackovic, supra note 479.
  35. Johnson & Johnson v. Actavis Group HF, No. 06-Civ. 8209(DLC), 2008 WL 228061, at *2 (S.D.N.Y. Feb. 21, 2008).
  36. Id. at 425
  37. Id.
Fordham IP Institute