A Primer on Color Trademarks: When Can a Brand Own a Color?

From vying for the attention of consumers in an uber-branded marketplace to adding potentially valuable new assets to their branding portfolios, the benefits of adopting colors as indicators of source are clear for retail brands. Companies like Tiffany & Co., Hermès, and Christian Louboutin have widely known proprietary hues, while more recent examples, including “Bottega Green” and Valentino’s PP Pink, have demonstrated just how closely a color can become associated with a single brand.

Against that background, a seemingly straightforward question arises: Can a brand actually trademark a color?

The answer is yes, but successfully claiming rights in a color is not necessarily straightforward. While it is well established that companies can amass rights in – and registrations for – single-color trademarks, what that actually entails for brands is more complicated, particularly in fashion, where color can serve both as an indicator of source and as an aesthetic element of the products themselves.

Color as a Calling Card

The notion that colors can act as indicators of source is not new. The ability of companies to rely on trademark law to protect proprietary hues was firmly established by the U.S. Supreme Court in Qualitex Co. v. Jacobson Products Co. in 1995. At issue in Qualitex was the green-gold color that Qualitex used on dry-cleaning press pads. In determining that there is no categorical bar to protecting a color as a trademark, the Supreme Court held that a single color can operate as a trademark upon a showing of secondary meaning – namely, that consumers have come to associate the color with a particular source.

The decision followed the U.S. Court of Appeals for the Federal Circuit’s determination a decade earlier in In re Owens-Corning Fiberglas Corp., which paved the way for Owens-Corning to claim trademark rights in the color pink for insulation. Even though it is well established that companies can amass rights in single-color trademarks, the more difficult question is what it takes to establish those rights – and what may stand in the way of registration.

Secondary Meaning & Aesthetic Functionality

One of the most pressing issues for brands looking to establish rights in their use of a single color is secondary meaning, which Qualitex requires. Single colors are not considered inherently distinctive and, therefore, a company generally must show that consumers have come to view the color as identifying a particular source. Evidence of acquired distinctiveness can take a number of forms, including the duration and exclusivity of a company’s use, advertising expenditures, sales success, media coverage, consumer studies, and attempts by others to copy the claimed mark.

It is worth distinguishing single-color marks from certain multi-color marks. In 2020, the Federal Circuit reversed the USPTO Trademark Trial and Appeal Board’s finding in In re Forney Industries that a color mark can never be inherently distinctive. The trademark at issue there consisted of multi-color product packaging, and the court held that such a mark can be inherently distinctive when its overall impression serves to identify source.

For well-known fashion brands, secondary meaning may not always be the biggest hurdle. As University of Oklahoma Law professor Jon Lee previously told TFL, “if a brand is popular enough, a significant number of consumers will [eventually] associate that color with that particular brand.”

Instead, a potentially more difficult hurdle for brands looking to claim trademark rights in their use of color on or in connection with clothing and accessories is aesthetic functionality. A mark is aesthetically functional, and therefore ineligible for trademark protection, when granting one company exclusive rights would significantly undermine competitors’ ability to compete in the relevant market. The doctrine is particularly significant in fashion because color often contributes to the aesthetic appeal of a product itself.

From an aesthetic functionality perspective, Lee points to Louboutin’s “Chinese red” sole trademark as a relatively rare example. The placement of the color on the bottom of a high-heeled shoe differs from the use of a color across an entire garment or accessory, where consumers may want the product precisely because of its color. And while an aesthetic functionality issue raised in Christian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc. initially threatened the footwear brand’s ability to maintain a valid trademark registration, even in light of substantial evidence of consumer recognition and the USPTO previously issuing a registration for the mark, the red sole ultimately survived.

The Second Circuit held that Louboutin’s red outsole had acquired secondary meaning when used in contrast with the adjoining portion of the shoe. At the same time, it limited the scope of

Louboutin’s registration accordingly, meaning that the trademark does not give Louboutin exclusive rights in red footwear or even red soles in every context. The case remains a particularly useful illustration of the limits of color trademark rights in fashion. Short of such a distinctive use, “functionality with regard to clothes or accessories, themselves, would be a higher hurdle than a secondary meaning issue,” according to Lee.

Single Source or Part of a Trend?

With such potential refusal bases in mind, it may be easier in some cases for companies to enforce non-traditional trademark rights through litigation than to register them with the USPTO. A clear example comes by way of college colors. In the 2008 decision in Board of Supervisors of Louisiana State University Agricultural & Mechanical College v. Smack Apparel Co., the Fifth Circuit found that Louisiana State University, the University of Oklahoma, the Ohio State University, and the University of Southern California, along with their official licensee, had protectable interests in their respective color schemes when used in combination with other identifying indicia. “There is no way,” Lee says, that the schools would have been able to register such color-centric marks with the USPTO.

The case is a reminder that registration and trademark rights are not necessarily the same thing. Rights can arise from use, and companies may be able to establish protectable interests even where the mark at issue would be difficult to register on its own.

Another point worth noting when it comes to companies successfully claiming proprietary colors as part of their arsenal of branding is the role that market trends play. One need not look further than Bottega Green for a concrete example. During Daniel Lee’s tenure, Bottega Veneta released a steady stream of “it” accessories in the vivid green hue and incorporated the color into its ad campaigns, large-scale installations, stores, and other brand-facing materials. In the process, the company managed to cement Bottega Green at the center of the fashion zeitgeist and transform the previously dusty brand – and its leather goods – into some of the most in-demand offerings among millennial and Gen Z consumers.

Against that background, other brands – from Jacquemus to Dolce & Gabbana – began to offer up notably similar green-colored accessories of their own, likely in a quest to cater to the very real demand that had already been established by Bottega. The apparent effect of prompting the rise of an “it” color is the inevitable “inspiration” that follows.

From a color trademark perspective, the influx of Bottega Green-like accessories from brands other than Bottega raises an interesting question: Does the proliferation of a color after one brand popularizes it help the company establish rights by demonstrating copying, or does it chip away at its potential claim that consumers associate the color with a single source?

Many trademark tests look to copying and/or the intent of the parties in assessing whether a brand has a protectable trademark, meaning that the machinery exists for courts to consider examples of copying or attempts to piggyback on consumers’ recognition of a potential color mark.

As Lee puts it, “when a brand is copying it shows that there is a protectable interest to begin with; that there is a reason they are trying to trade on the reputation of another well-known brand.” In other words, being able to point to examples of “attempts to copy” might actually prove useful for brands looking to establish rights in their use of a color mark on or in connection with certain goods. It does not, however, remove the aesthetic functionality elephant that comes hand-in-hand with apparel and accessories.

Valentino’s PP Pink provides another example. The Italian fashion house introduced the intensely saturated shade as the centerpiece of its Fall/Winter 2022 collection, using it across garments, accessories, runway staging, packaging, and other branding. Its introduction coincided with a broader rise in hot pink across the fashion market, ultimately raising the same question: At what point is a color identifying a single source, and at what point is it simply part of a broader trend? Chances are, brands will have better luck if they take a multi-pronged approach to amassing and enforcing rights in a color mark.

In addition to using the color on garments and accessories, which can raise red flags on aesthetic functionality grounds, companies would be wise to use such colors on more traditional mediums of branding. “If I was a brand, I would not just use the color in association with fashion [items],” Lee says, “but also on the packaging because we know it will be easier to get a protectable interest in the packaging.”

Hermès, for instance, has built up rights in (and has registrations for) a shade of orange as applied to “the exterior of merchandise boxes for goods” ranging from handbags and clothing to jewelry and fragrances, as well as for retail store services; and millennial beauty brand Glossier has rights in specific uses of its millennial pink (Pantone 705 C), namely, on cosmetics-related product packaging. Veuve Clicquot offers another longstanding example. The Champagne house has used its distinctive yellow-orange branding for nearly 150 years, tracing its Yellow Label trademark to 1877, and today maintains trademark registrations that claim yellow-orange (Pantone 137C) as a feature of its labels and other packaging.

And Tiffany & Co.’s consistent use of color across packaging and branding shows how a hue can become a powerful source identifier. Its robin’s egg blue hue has appeared on product packaging and other brand materials for more than a century, making the color itself one of the company’s most recognizable assets.

Brands can potentially parlay such packaging-focused rights into infringement claims when competitors use confusingly similar branding, even if claiming exclusive rights in the color as applied directly to fashion products would present a more difficult proposition.

A Color Refusal

The difficulty of establishing rights in a color is reflected in the evidence that the USPTO and courts look for when determining whether consumers actually view a color as a trademark. In re Grypmat, Inc. provides a useful illustration. The TTAB upheld an examiner’s refusal to register the color orange for use on “tool and tool accessory trays not made of metal sold empty and parts and fittings therefor” on the basis that the proposed mark was not inherently distinctive, had not acquired distinctiveness, and thus failed to function as a trademark. Aesthetic functionality was not the issue. Instead, the case turned on acquired distinctiveness.

Considering the factors set out by the Federal Circuit in Converse, the TTAB determined that Grypmat fell short of carrying the high burden of showing that its proposed color mark had acquired distinctiveness. Among other things, the TTAB pointed to a lack of “look-for” advertising designed to direct consumers’ attention to the color orange as a source-identifying feature. While Grypmat’s sales and advertising figures were substantial, the Board emphasized that strong sales and advertising do not necessarily establish that consumers view a particular feature as a trademark.

The same was true of the media attention surrounding the company, including appearances on “Shark Tank” and coverage by publications such as Time and Forbes. What was missing was evidence that the orange color itself had particular significance as an indicator of source. That distinction is particularly relevant for fashion brands, which can generate enormous attention around a particular color without necessarily teaching consumers to treat that color as a trademark.

Single-color marks remain relatively difficult to come by, particularly for use on products rather than packaging. That does not mean, of course, that companies across industries – from shipping and logistics companies to fashion and luxury brands – will not continue to try and, in some cases, succeed.

The strongest color marks tend to be the result of more than simply selecting a distinctive shade or generating a moment of widespread attention. Consistent and exclusive use, deliberate efforts to encourage consumers to view the color as a source identifier, and use across traditional branding materials can all help companies build a stronger claim.

For fashion brands, there is an added complication: The more commercially desirable a color is as a feature of the product itself, the more difficult it may be to claim exclusive trademark rights in it. That is ultimately the line that separates an “it” color from a color trademark. A shade can become synonymous with a brand in the fashion zeitgeist relatively quickly. Establishing that it functions as a legally protectable indicator of source is another matter.