Trademark’s Bulwark Against Consumer Color Confusion
The robin’s egg blue box tells you the gift is from Tiffany before you get close enough to read the company’s name. The red lacquered sole of a high heeled shoe is instantly recognizable as a Louboutin pump, without having to read the insignia on the insole. That’s because these companies have become so associated with their signature color that it has acquired a secondary meaning.[1] A color is said to have secondary meaning under trademark law when “used so consistently and prominently…that it becomes a symbol, ‘the primary significance’ of which is ‘to identify the source of the product rather than the product itself.’”[2]
It’s not just exclusive fashion brands and high-end jewelry companies that benefit from this kind of protection. The first cases to solidify trademark protection for colors involved mundane materials used in home construction and dry cleaning.[3]
In 1985, the Owens-Corning court held the maker of home insulation was entitled to trademark protection for the signature pink color of its product for two reasons: the color had earned secondary meaning in the company’s three decades of exclusively using and promoting it, and the color had no utilitarian purpose that would deprive competitors of any reasonable right.[4]
The Supreme Court went further in 1995 in a unanimous ruling finding a trademark consisting “purely and simply, of a color” can meet legal requirements for registration and protection.[5] The Court held that Qualitex Company’s special green-gold shade of dry cleaning pads acted as a symbol of their source and thus had developed secondary meaning.[6] The Court also held the color served no other functional purpose that would put competitors at a disadvantage by barring them from its use.[7]
This protection exists in part to protect the investment the company has made in its brand, and its right to profit off that investment.[8] But it also serves the important function of assuring consumers can rely on the brand they have come to know and trust, limiting their ability to be bamboozled by cheap imitations. Trademark protection acts “to secure to the owner of the mark the good will of his business and to protect the ability of consumers to distinguish among competing products…. protecting the public against spurious and falsely marked goods.”[9] It also “reduces the customer’s costs of shopping and making purchasing decisions for it quickly and easily assures a potential customer that this item…is made by the same producer as other similarly marked items that he…liked (or disliked) in the past.”[10]
We may not be aware of the degree to which we make these brand-color connections until we have the chance to see when the matchup is amiss.[11] Many a Starbucks customer would be surprised to find a purple mermaid on their morning cup of coffee, McDonald’s regulars may be bewildered if their drive though took them under the crimson arches, and you may be perplexed to find your UPS package delivered in a hot pink truck.[12]
A district court ruling in Iowa earlier this year appears to expand the protection of color trademarks beyond the single, registered shade to a range of colors that are likely to cause uncertainty among consumers.[13] Weems Industries brought an infringement action against competitor Teknor Apex for marketing products similar to those of its signature “FlexZilla” hose in a chartreuse color it trademarked as “ZillaGreen.”[14] The court ruled Weems had a valid, protectable interest in its trademark of the color, and that Teknor’s hoses, though not identical in color, are similar enough that they are “likely to cause customer confusion regarding their source.”[15] The court held Weem’s trademark protection was not limited to the precise shade it registered, and the test for infringement was whether “the total effect conveyed…is confusingly similar.”[16]
Footnotes
