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Trademarks 101: When Can I Trademark a Color?

January 25, 2017

 

 

 

What do these two colors have in common?

 

 

Well, not only would they both look very appropriate on the walls of a newborn's nursery, but they also both have an interesting role in United States trademark law.

 

The more appropriate question is "what makes these two colors so different?" I am going to take a moment and stop any of you wise guy readers who thought "duh, one is blueish and one is pink," and I am going to ask you to drop the 'tude and try to view them through the lenses of the United States Patent and Trademark Office (USPTO) and the Supreme Court. It is their analyses of these two colors that has made them very different indeed . . . at least when it comes to how they are associated with consumer goods.

 

 

A Trademark Brush-Up

 

Trademarks can be a lot of different things, as long as those things serve two functions: 1) they identify the source of goods or services and 2) they distinguish the goods or services from one source from the goods or services provided by another source. 

 

I love trademark law, as any IP nerd does, because its motives are pure. Trademark law is intended to protect both consumers and businesses.  For consumers, trademarks mean that when you come across a product, you know exactly what you will be getting. You can carry on with peace of mind because you know that the product that you just bought is from a reliable company that you have grown to trust.  For businesses, it is this trust or goodwill that trademark law seeks to preserve. Companies work very hard to build their brand and good reputation. It would be a shame if Company B were to make a shoddy version of a product and consumers believed it was actually made by Company A. If there is no trademark to distinguish the products from the two companies, then Company A suffers because of the quality of Company B's product.

 

 

Distinctiveness

 

Trademarks have been registered for all sorts of identifiers ranging from words to logos to slogans to jingles. While the range of the type of registered trademarks is very broad, trademarks do have their limits. One major limitation is that a trademark must be sufficiently distinctive.

 

"Huh?"

 

Think about it like this.  There are some words that cannot be trademarked because they are so commonly used when talking about certain products.  What if Coors wanted to trademark the word "beer?"  It would be unfair to give Coors the exclusive use of the word in their market because all of the other beer breweries need the word "beer" to describe their products as well.  "Beer" is too generic and is therefore not distinctive enough to receive trademark protection.

 

Distinctiveness comes in two varieties.  It can be inherent in the mark, meaning that you can tell it is different just by looking at it or by hearing it, or distinctiveness can be acquired over time as people begin to form associations with a mark over time.  

 

One example of an inherently distinctive trademark is the word "APPLE" being used for computers. It is inherently distinctive because it is so arbitrary when associated with their products.  It is sort of different and unique enough that competitors will not require the use of the word to promote their products.  However, "APPLE" brand apples would not fly because the word "apple" is generic when talking about produce.  

 

An example of a mark acquiring distinctiveness is "SHARP" televisions.  "SHARP" was not a registerable trademark initially because it was considered descriptive of the televisions it represents. Descriptive trademarks may not be registered until they have acquired distinctiveness. Over time, "SHARP" became associated with televisions through the sale and promotion of SHARP products, and now "SHARP" has acquired distinctiveness.

 

 

"Why are you rambling on about distinctiveness when this article is about color?"

WHY?  Because I am setting up the reason why Tiffany & Co. has been able to register their signature "Tiffany Blue" and why Pepto Bismol had their dreams of registering "Pepto Pink" flushed down the toilet (pun absolutely intended).

 

 

Functionality

 

The U.S. Supreme Court has decided that a color may be a trademark so long as two conditions are met:  1) the public must strongly associate the color with a product (Remember one paragraph ago when we discussed acquired distinctiveness?), and 2) the color can be in no way functional. This second requirement is because subject matter that is functional as a whole is barred from registration under Lanham Act Section 2(e)(5).

 

Functional?  How on Earth can a color be functional?

 

Probably the same thought that was running through minds of the people at Norwich Pharmaceutical Company when they lost in court in 1958. Norwich was convinced they had trademark rights in the pink color of their product, and they had sued a competitor for using the same color for their product. The court concluded, however, that the pink color of the product was indeed functional and was not a valid trademark. After all, Pepto is used for treating an "upset stomach," which also has a pink color. Therefore, pink is functional in that it signals to consumers that it is intended to soothe the stomach. You don't have to agree with the rationale, you just have to accept it for now.

 

Tiffany & Co. did not have the same problems as Pepto.  The blue color has no function when used in association with jewelery, and Tiffany has registered trademarks for its signature blue in association with its boxes, bags, and catalog covers.  While Tiffany does have some protection, keep in mind that Tiffany's trademarks only prevent other jewelers from using that particular shade of blue. "Tiffany blue" may still be up for grabs in unrealated markets, and Tiffany competitors still have many other options when choosing the right blue for their products.

 

 

About the Author:

 

David "Tyler" Bennett is an intellectual property attorney and a partner of

Verhagen | Bennett LLP.  To learn more about David, please click here.

 

For questions or comments about this post, please email David directly at:  David@VerhagenBennett.com

 

To make suggestions about future posts, please email:  Info@VerhagenBennett.com

 

 

© 2017 David T. Bennett — This article is for general information only. The information presented should not be construed to be formal legal advice nor the formation of a lawyer/client relationship.