The fashion media has been abuzz since a top European Union court sided with Christian Louboutin in its ongoing and very global fight for registered protection for its red shoe sole trademark. The decision from the Court of Justice of the European Union – which means Louboutin is one step closer to maintaining its exclusive rights in its red soles in Benelux, where the legal battle at hand was initiated and where Louboutin maintains a registered trademark (the validity of which was up for debate in this case) – has been deemed “a win for fashion brands.”
This is a win for some brands, certainly – but chances are, not very many. In fact, before you get excited and attempt to claim exclusive rights in a color for your own brand, here’s the reality: There is a good chance you won’t be able to do so. The decision from the court likely only bolsters protections for some of the world's most famous brands in their respective market segments.
Louboutin, for instance, has legal rights in its red sole across the globe, including in the United States, China, Russia and Australia; Tiffany & Co. similarly has legal rights in its robin’s-egg blue hue for use on gift boxes, shopping bags, and jewelry pouches, among other things. John Deere claims exclusivity in its specific green/yellow color combination, and Mattel has its own custom “Barbie Pink” Pantone hue, for which it maintains trademark rights for use in more than 100 categories, ranging from dolls, of course, to toiletries and breakfast cereal.
As the legal buffs – and/or regular TFL readers – amongst us will know, trademark rights in colors are strengthened by a decision from the U.S. Supreme Court, which explicitly held in the mid-1990's in Qualitex Co. v. Jacobson Products Co. that a color can be registered as a trademark, as long as it identifies the source of the products at issue.
With this in mind, you should be asking yourself: What does it take, exactly, to prove that your color of choice “identifies the source of your products”?
Legally speaking, in order for a color mark (or other trade dress) to be protected, it must have secondary meaning (i.e., consumers must be able to link that specific use of color to a single source). Take Christian Louboutin, for example. One of the most well-known footwear brands in the world, Louboutin is able to claim that consumers link red soles with its brand thanks to a whole slew of accolades, some of which the brand laid out in its lawsuit against Yves Saint Laurent in 2012.
According to Louboutin’s complaint in that case, consumers have come to identify red soles with its brand thanks to significant sales volume (as of 2010, Louboutin, a privately-held company, was bringing in over $250 million in sales and selling more than 600,000 pairs of shoes a year). It also noted the placement of its footwear in about all of the world’s leading fashion magazines and on widely-watched red carpets, in major motion pictures and television shows, in song lyrics, and on big-name designers’ seasonal runways.
As Louboutin stated in that same filing, thanks to each one of these instances of “unsolicited media coverage of Louboutin footwear, celebrity appreciation, and [Louboutin’s own] marketing efforts,” the red sole has received “attention from … millions of individuals throughout the world.”
But being world-famous is not enough in many cases. Counter the EU court's decision in the Louboutin case with a recent decision from the U.S. Patent and Trademark Office's Trademark Trial and Appeal Board ("TTAB"), which held the General Mills cannot claim exclusive rights in its Cheerios yellow.
In shutting down General Mills' trade dress application or registration for its specific color yellow for use on cereal boxes, the TTAB held that despite selling Cheerios cereal in yellow boxes since the 1940s, General Mills did not provide sufficient evidence to support the claim that its iconic yellow box in which Cheerios cereal is packaged was an identifier of source for consumers, in larger part because other companies use yellow boxes, as well.
The TTAB stated that the extensive use of yellow on other cereal boxes made it more likely that consumers would view those boxes as “eye-catching ornamentation customarily used for the packaging of breakfast cereals generally,” rather than as an indicator of Cheerios as a source.
From these two instances, we can garner a sense of the level of fame generally required of a brand and its color of choice in order to claim rights in it. Moreover, we can see that showing that consumers link a specific color exclusively to a single source is no small feat and one that requires not only a broad footprint in the marketplace but in many cases, a truly sizable marketing budget to get there and an aggressive legal team to ensure that other companies are not making use of the same – or similar – elements.