What can brown do for you?

A color can do quite a bit when it comes to embodying an organization’s good will, as evidenced by the color employed for nearly a century by UPS’s ubiquitous delivery trucks. According to the vice president for brand management and customer communications at the time of this only recently retired slogan’s launch, “brown is more than a color—it’s a tangible asset that people associate with all the things that are good about our brand. 

Categorizing a color as a “tangible asset” is not hyperbole. Single color trademarks are protectable in the U.S. And while no entity can “own” a color in all circumstances, the use by another of a trademarked color that results in customer confusion may result in liability for trademark infringement. Colors primarily identified with a certain purveyor of goods and services—from Tiffany & Co.’s diminutive blue box to the literally football field-sized blue turf of Boise State University’s stadium—are tangible, protectable assets.

The central question in modern disputes over the validity of color trademarks is whether the color is functional. Because trademarks can be held in perpetuity—unlike patents, which are time-limited—allowing a trademark owner a competitive functional advantage over industry rivals would severely constrain the market for relevant goods. Thus, where the exclusive use of a particular color carries with it some functionality that would significantly affect competition, it will be ineligible for trademark protection.

On the one hand, the color black has been held ineligible for trademark protection for outboard board motors. To be sure, the color does not impact the performance of the engine or the cost of manufacture—both questions of utilitarian functionality. Yet black is more desirable from the consumer perspective because of its compatibility with a wider variety of boat colors and because objects painted black appear smaller than when painted a brighter color. Aesthetic functionality, like utilitarian functionality, serves as a vital limit to trademark protection.

On the other hand, the color pink has been upheld as a valid trademark for insulation material because there is no functional advantage to using pink in that context. The color, though not distinctive in the abstract, has a secondary meaning when applied to insulation material in that—due to branding efforts—it identifies the material’s source. Importantly, there is no non-reputation-related competitive disadvantage to other industry players who cannot bring pink insulation material to market.

Last year, the 2nd Circuit addressed the question of color’s aesthetic functionality in the context of fashion. Louboutin v. Yves Saint Lauren Am. Holding, Inc. centered on the red soles that are (literally) the trademark of famed high-end shoe designer Christian Louboutin. Louboutin claimed infringement of his registered Red Sole Mark by competitor Yves St Laurent (YSL) through sale of monochromatic red shoes that included a red sole.

The District Court for the Southern District of New York declined to enjoin YSL from selling its red shoes. Further, it declared Louboutin’s trademark, and any color trademark in the context of fashion, to be invalid. On appeal, the Second Circuit affirmed the decision not to enjoin YSL, but overruled the District Court’s holding that a single color can never serve as a trademark in the fashion industry.

The 2nd Circuit drew a distinction between Louboutin’s use of red soles that stand in contrast to the shoe’s “upper” and YSL’s use of red soles in a monochromatic shoe. The red sole, according to the 2nd Circuit, has secondary meaning only as far as it contrasts with the rest of the shoe, causing the sole to “pop” and thereby distinguish its creator.  Importantly, Louboutin’s placement of the color in an unusual context was a deliberate attempt to tie the color to his product—the case does not stand for protection of any use of color merely because it “pops.”

Modern U.S. courts have downplayed the anti-competitive threat of color trademarks. The worst-case scenario for expanding color trademark protection is not difficult to imagine—industry players racing to register all colors of the rainbow, then using litigation threats to deter would-be market entrants. But contemporary decisions on the subject tend to avoid sweeping statements that would thrust the color registration door open to the point of monopoly, routinely noting that the analysis of a color’s functionality—and thus its eligibility for trademark—is a highly fact-specific endeavor.

As long as there are organizations that have built customer good will through their brands, there will be enterprising newcomers attempting to exploit that good will and market leaders who overreach in their defense of it. Consumer confusion will always be a possibility, whether a mark is on a color, a shape, a symbol or even a phrase—words, after all, each have their homonym.

The development of modern color trademark protection in the U.S. demonstrates a reliable commitment to case-by-case analysis focused far more on the practical consequences of protection than on broad doctrinal strokes or bright-line rules. Keeping in mind courts’ resolve to protect color trademarks only so far as they have some secondary meaning to consumers—and only to the extent they do not put industry rivals at a competitive functional disadvantage—can help guide an organization in determining when to pursue registration of a color trademark, enforce its own color trademark, or challenge another’s existing color trademark.