| Under the Lanham Act "any word, name, symbol or device" may be eligible for trademark registration. Courts have differed as to whether or not the law recognizes the use of color alone as a trademark because the Lanham Act does not specifically mention color. For many years the general rule had been that color would not be given trademark significance because of the limited number of colors available, unless the color was employed as an element of a distinctive design.
Qualitex Co. v. Jacobson Products Co.
In Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995), the Supreme Court unanimously held that color alone may be registered and protected as a trademark. The Court rejected arguments based on the depletion theory, reasoning that alternative colors would usually be available for competitors. In those cases where alternative colors were not available, courts could deny trademark protection in those circumstances where color depletion may actually occur. A key part of the decision rested on the fundamental trademark premise that color is capable of distinguishing goods or services. Justice Breyer, writing for the court, stated that color is capable of registered trademark protection where it is shown to be nonfunctional and to have acquired secondary meaning. Therefore, there is no longer a rule absolutely barring the use of color alone as a trademark.
Nonfunctional
A color cannot be a trademark if the color is functional in nature. As the Supreme Court recognized in the Qualitex case, color per se is not protectable where it is descriptive in nature or where it functions in some way in connection with the product. In either circumstance, protection for color would have a detrimental impact on the competitive process. Functionality can be defined by multiple criteria, including the following:
- Psychological Effects. When a color's associations relate to the product in a literal or abstract way, this is considered to be functional.
- Aesthetic Effects. Many color combinations can be considered to be harmonious and appealing. Functional design effects may also include perception of size and weight.
- Visual Effects. Some colors seem to advance while others seem to recede. Some color combinations render text legible while others are problematic.
Secondary Meaning
Without distinctiveness there can be no trademark and a color alone can never be inherently distinctive. A color may become distinctive through secondary meaning, the same way a descriptive term can become distinctive over time. In order for a color to be considered a trademark, the owner must show that secondary meaning has been developed for the color. A color alone can, if it is distinctive of goods or services, be registered and protected in the same manner as any other trademark.
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