Robin-egg blue boxes and shiny red soles—some colors do more than please the eye. They signal status, evoke emotion, and, increasingly, serve as trademarks. Think Tiffany & Co.’s signature blue packaging or the iconic red soles of Christian Louboutin shoes. But can a company really own a color?
How Color Became Trademarkable in the Eyes of the Law
It wasn’t until 1995 that the U.S. Supreme Court definitively said yes. In Qualitex Co. v. Jacobson Products Co., Inc., the Court held that a color, by itself, could serve as a legally protected trademark—provided it met certain criteria. Before this landmark case, courts were divided and skeptical. The objections generally fell into two categories. First, some courts considered color to be “functional.” Under trademark law, functional features—those essential to a product’s use or that affect cost or quality—cannot be trademarked. For example, a bright color used to increase visibility or imply sterility in a medical product would likely be considered functional. Second, there was concern that allowing color trademarks could lead to “color depletion.” If companies could monopolize individual hues, it might unfairly limit competitors from using ordinary colors in packaging or product design.
Qualitex changed that. The Court ruled that color can function as a trademark so long as it is (1) non-functional and (2) has acquired distinctiveness—also known as “secondary meaning.” In Qualitex, the green-gold color of a dry-cleaning press pad was found to have developed an association with a single source in the minds of consumers, i.e., it possessed secondary meaning.
The Supreme Court wrote:
We cannot find in the basic objectives of trademark law any obvious theoretical objection to the use of color alone as a trademark, where the color has attained ‘secondary meaning’ and therefore identifies and distinguishes a particular brand (and thus indicates its source).
In short: you can trademark a color, but only if the public has come to associate that color with a single brand.
When Color Isn’t Enough
The secondary meaning requirement is often the linchpin in modern disputes. Here is a recent example. In In re: PT Medisafe Technologies, decided by the Federal Circuit, Medisafe sought to register the color dark green for its chloroprene medical examination gloves. The USPTO refused, arguing the color was generic—commonly used across similar products—and lacked acquired distinctiveness. Medisafe appealed to the Trademark Trial and Appeal Board (TTAB), which upheld the refusal. Medisafe then appealed to the Federal Circuit, where it again lost. The court found that the color green was “so common in the industry that it cannot identify a single source.” Of 25 examples of dark green gloves submitted as evidence, Medisafe admitted that it only manufactured 15. The rest reflected third-party use. The court held that generic colors cannot acquire distinctiveness and declined to reach that issue.
Despite the caveats above, you might wonder whether it’s possible to register a color trademark before it has acquired distinctiveness. In the United States, the answer is yes—provided the mark is not generic; that is, not like the gloves in the Medisafe case. The mechanism for doing so is the “Supplemental Register,” which functions as a provisional listing for marks that are capable of becoming distinctive, but are not yet eligible for the Principal Register. This includes marks that are merely descriptive or lack inherent distinctiveness—such as a single color used in trade dress.
Registration on the Supplemental Register does not confer full trademark rights, but it does provide important benefits: it puts others on notice of your claim to the mark, allows you to use the ® symbol, and can serve as a bar to registration of confusingly similar marks. Once your mark acquires distinctiveness—typically after five years of continuous use and substantial marketing—you can apply to move it to the Principal Register. For more on the differences between the two Registers and how to use them strategically, see our article on the subject.
Considering registering a color trademark? Let the lawyers at Lipton, Weinberger & Husick advise you on feasibility and strategy.
— Adam G. Garson, Esq.