Trademarks come in a variety of forms. Indeed, trademark protection is not restricted to verbal marks like “Coca-Cola” and “Apple” but extends to an array of non-verbal source identifiers. Among the most interesting and unconventional categories of marks that can receive protection is color. However, the American judiciary’s treatment of colors as trademarks has potentially afforded too much protection to color-based marks.
The foundational case in establishing color functioning as a trademark is Qualitex Co. v. Jacobson Prod. Co., 514 U.S. 159, 159 (1995). There, a unanimous Supreme Court held that sometimes a single color, without more, “will meet ordinary legal trademark requirements,” and in these circumstances, there is “no special legal rule [that] prevents color alone from serving as a trademark.” In particular, the Court found that the petitioner’s unique shade of “green-gold” color on its dry cleaning press pads was eligible for protection. In reaching this conclusion, Justice Breyer identified no reason to differentiate between color and other protectable trademark forms, reasoning that color “can act as a symbol that distinguishes a firm’s goods and identifies their source.” In other words, the decision deemphasized the form a mark took and focused instead on the mark’s ability to designate a commercial source for consumers. The trademark protection of single colors, however, is akin to descriptive verbal marks; the color must have attained “secondary meaning” (that is, acquired a reputation as a mark through commercial use) to be protectable.
Qualitex’s principal holding that single colors can function as trademarks provided evidence of secondary meaning is met with two salient objections. The Court addressed both in its opinion, but carefully revisiting these objections may indicate that they were dismissed perfunctorily.
A first objection, called shade confusion, says that if single colors may be used as trademarks, disputes will arise “about what shades of a color a competitor may lawfully use.” Indeed, inconsistent decisions and general uncertainty are inherent consequences of allowing single colors to be trademarked. How much darker or how much lighter, precisely, does another dry cleaning press pad have to be to avoid infringing the “green-gold” trademark owned by Qualitex? The Supreme Court dismissed this concern quickly, reasoning that the same line-drawing issues arise in the context of verbal marks, and the same dispute resolution standards that are applied in that context can be applied to colors. However, this solution fails to acknowledge that colors are different from words and phrases in a fundamental way. Verbal marks may be compared objectively in multiple basic respects – the Court may consider their length, their pronunciations, and the content they describe, just to name a few. Colors, however, may not be compared or described so easily. Colors vary objectively only in one respect: their position on the color spectrum. Furthermore, there can be no principled way to discern when a color has strayed sufficiently far from another to determine that it is not infringing. One cannot describe what a color consists of in the way that one can describe what a phrase or word consists of. Indeed, there is no way to articulate the characteristics of a single color without simply referencing other colors or subjective features, like the emotions they evoke in us. Colors, unlike words and phrases, are irreducible, and this makes their comparison more difficult. The substantial difficulty, if not impossibility, of characterizing and comparing single colors in a disciplined way suggests that the shade confusion problem may not be resolvable through typical doctrinal means. Therefore, single colors are not appropriate for trademark protection.
A second objection suggests that there are only so many colors that may be used, and if colors may be appropriated as trademarks, there will be no colors left to choose from. This is a consequence of the limited color spectrum (and the even more limited set of colors that may reasonably be applied to a given product), along with our inability to differentiate between close colors. The Court identifies two reasons why this color depletion problem may be disregarded. First, in a single sentence, the Court states that “[w]hen a color serves as a mark, normally alternative colors will likely be available for similar use by others.” While this may be true, a problem that arises only occasionally is still a problem nonetheless, and the seeming impossibility of selecting a non-infringing color for your product is a serious problem. Second, the Court suggests that in the rare problematic cases when color depletion does arise, the functionality doctrine will trigger to prevent anticompetitive consequences. There is potentially an oversight in this reasoning. The functionality doctrine certainly would bar from trademark colors that serve some utilitarian or aesthetic purpose. For instance, the blue color of fertilizer, which indicates the presence of nitrogen, and the black color of outboard boat motors, which are aesthetically compatible with most boat colors, may not be trademarked due to their functionality. But it is not clear, however, that the functionality doctrine will address the narrower issue of colors that serve no functional purpose being grabbed up through trademarks. Indeed, the functionality doctrine seems wholly unrelated to the situation in which many market participants claim trademark in all reasonably usable, non-functional and arbitrary color choices, thereby depleting the supply of colors available for competitors. The Supreme Court, in this instance, may offer no legitimate solution to the (albeit rare) color depletion problem.
Given these unresolved issues, we might worry about the propertization of single colors, and the judiciary’s willingness to afford property rights in colors is by no means an isolated event. In In re Forney Indus., Inc., 955 F.3d 940 (Fed. Cir. 2020), the Federal Circuit determined that a product packaging mark consisting only of a color spectrum can be inherently distinctive, and therefore eligible for trademark protection without evidence of secondary meaning. In other words, the Court believes that trade dress that is just constituted by various colors, like the appellant’s array of orange and yellow on packaging for welding tools, is capable of automatically signaling to consumers that it refers to a brand. One who takes color depletion seriously might worry about a similar problem creeping into the domain of multi-color marks, especially if a showing of secondary meaning is not required to claim property rights in a color array. That being said, it seems crucial that this doctrine is applied such that only truly unique or uncommon color arrays are awarded protection on the basis of inherent distinctiveness.