In a November 9, 2012, article in The Legal, "Right ‘Pop’ of Color Can Be a Legally Protected Trademark," we discussed the case of fashion industry powerhouses Christian Louboutin, Christian Louboutin S.A. and Christian Louboutin LLC (Louboutin) and Yves Saint Laurent America Holding Inc., Yves Saint Laurent S.A.S. and Yves Saint Laurent America Inc. (YSL) doing battle over the color of soles on high fashion shoes. Louboutin sued YSL in a New York federal district court for trademark infringement. Specifically, Louboutin was trying to prevent YSL from selling a red monochrome shoe with a red outsole, which it deemed infringed Louboutin’s red sole mark, in Louboutin S.A. v. Yves Saint Laurent America, 778 F. Supp. 2d 445 (S.D.N.Y. 2011).

Whether and when color can serve as a trademark has been a long-debated question, and as the debate continues, the answers continue to be inconsistent. Much of the debate still focuses on concerns about removing entire portions of the color palette from the public. The issue of color as a trademark was recently addressed in the medical industry in a case decided by the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office on the final day of 2012. (See In re Cook Medical Technologies LLC, 105 U.S.P.Q.2d 1377, 1378 (TTAB 2012).)

The TTAB’s decision affirmed the examining trademark attorney’s action of denying Cook Medical Technologies LLC a trademark registration for the color teal. The teal color was a feature of the proposed mark for "medical devices, namely, guiding sheaths for use in conjunction with access needles, wire guides and dilators for providing access for diagnostic and interventional devices in vascular and non-vascular procedures." The refusal to register the mark was affirmed because the TTAB found that a likelihood of confusion existed between Cook Medical’s application and three previously registered marks for "catheters" that included "blue" as a feature of their marks.

As a starting point, the TTAB determined that there was a likelihood of confusion between Cook Medical’s application and the cited catheter registrations because Cook Medical’s guiding sheaths and registrant’s catheters were closely related goods. In addition, the TTAB presumed that with the lack of any limitations as to channels of trade or classes of purchasers in the identification of goods in the subject application and cited registration that Cook Medical’s goods and the registrants’ goods traveled in the same channels of trade and were available to all classes of purchasers.

Next, the TTAB then moved onto the crux of the appeal: Was Cook Medical’s guiding sheath with the teal color similar to the registered blue catheters? This required the TTAB to confront the task of making a confusion determination involving the comparison between two color marks. The specific issue facing the TTAB was one of "shade confusion." The TTAB had to answer the question of whether one can make a distinction when comparing the color "blue" with the color "teal," which is described as "greenish blue" or "bluish green." The TTAB found that Cook Medical’s teal-colored mark running the length of the shaft of a guiding sheath used for catheters and cited registration for a blue color mark running the length of a catheter are similar in appearance and the registrations for the blue marks were not limited to a certain shade of blue and they encompassed Cook Medical’s teal or greenish-blue color. Consequently, the TTAB found that the marks were visually similar in terms of their appearance and the overall commercial impressions were such that consumers would be confused as to the source of the goods.

Despite its ultimate holding, the TTAB made it a point to state, "We do not suggest by our decision herein that merely because a party obtains a registration for a single color that such registration will block others from using or registering marks for other colors, even similar colors." The TTAB went even further in this decision to comment on the course of action that Cook Medical could have taken to narrow or restrict the registrations cited against its application.

The TTAB specifically noted that Cook Medical could have sought the restriction of the cited color registration by filing a petition to cancel under Section 18 of the Trademark Act, 15 U.S.C. § 1068. With that petition to cancel, Cook Medical could have specifically requested that the registrant’s description of its mark be modified on the basis that the registrant’s description was ambiguous or overly broad and not specific to the mark actually used in the marketplace. If Cook Medical were successful, it could have resulted in the registrant having to modify its description of the mark from "blue" to the specific shade of blue actually used in the marketplace. Because Cook Medical failed to make a petition that the registrant’s registration be modified to make its description of the mark a specific shade of blue, the TTAB was required to consider the cited mark to be any shade that would fall under the general term "blue." The TTAB could not read in any shade limitations or consider the shades in the Pantone scale of colors.

This TTAB decision recognized the various court holdings that a single color can act as a mark. (See Qualitex v. Jacobson Products, 514 U.S. 159, 164 (1995) ("Color alone, at least sometimes, can meet the basic legal requirements for use as a trademark. It can act as a symbol that distinguishes a firm’s goods and identifies their source, without serving any other significant function."); In re Owens-Corning Fiberglas, 774 F.2d 1116 (Fed. Circ. 1985) ( It was held that color can act as a product-source designator, and the color at issue in that case was pink, which is a source designator for Owens-Corning’s fiberglass insulation.); and Louboutin v. Yves Saint Laurent America Holdings, 103 U.S.P.Q. 2d, 1937; 2012 U.S. App. LEXIS 18663 (2d Cir. Sep. 5, 2012) (Louboutin’s red sole mark, through its fame and popularity that were a result of Louboutin’s extensive advertising, resulting media coverage and Louboutin’s sale success, was found to have acquired limited secondary meaning and as a result the single-color red sole mark was deemed a legally protected trademark in the fashion industry).)

The TTAB decision and a number of court cases are seemingly at odds with the thinking of at least one expert, professor J.T. McCarthy, who offered the following on the topic in McCarthy on Trademarks and Unfair Competition, supra at Section 7:45.70:

"The legal scope of a trademark in color is not defined in scientifically objective terms, like the claims of a utility patent. The test of infringement is not how many Pantone shades the defendant is distant from the senior user’s mark, but whether the reasonably prudent customer would be likely to be confused as to source, sponsorship, affiliation or approval. Some courts blithely assume that because there are hundreds of scientifically identifiable shades, consumers can distinguish between them to identify hundreds of different commercial sources by fine variations in shade and that therefore colors will never be ‘depleted’ and no one will be confused. In the author’s opinion, this is an unrealistic view which erroneously assumes that the first competitor in a market to establish a primary color such as ‘red’ as its distinguishing color will stand by and not sue (and likely win) when a competitor enters with a different shade of red, the junior user arguing in defense that its ‘yellowish red’ is not confusingly similar to the senior user’s ‘bluish red.’ Anyone who has gone shopping in a paint store and been unable to distinguish between fine variations of shades will appreciate the attitude of a judge or juror asked to find that ‘yellowish red’ does not infringe ‘bluish red.’ If the decision-maker thinks that the ordinary purchaser or user will see the color as a source indicator, and see them as close enough as to be likely to confuse source or affiliation, then infringement will be found, even though the color shades are not identical."

The TTAB acknowledged McCarthy’s view that a color claim can be overly broad, but advanced the argument that Cook Medical had options for limiting the scope of the cited marks. The TTAB’s decision should not be read to hold that only one party will be entitled to a color mark for a specific type of goods. Rather, it should be read to advise trademark owners and trademark attorneys to consider all available remedies.

The takeaway here is to determine at the outset the value of the mark to the business, investigate the availability of the desired mark and identify any obstacles to registration before filing. With this information, you are prepared to consider the options for improving the likelihood of securing a registration. Remember, there are a multitude of shades of gray between black and white. •

Anthony S. Volpe is a shareholder at Volpe and Koenig, an intellectual property law firm with offices in Philadelphia and Princeton, N.J. He has corporate and private-practice experience in securing, licensing and enforcing all aspects of intellectual property rights.

Kristine L. Butler is an associate in the firm’s Princeton, N.J., office and focuses her practice on trademark procurement and enforcement, as well as patent, copyright and trademark litigation in federal courts.