Indicators of Source: The Strategies, Hurdles of Building Trademark Rights in Color

From vying for the attention of consumers in an uber-branded marketplace to adding potentially-very-valuable new assets to their branding portfolios, the benefits of adopting colors as indicators of source (i.e., trademarks) are becoming increasingly evident for fashion and luxury brands. While companies like Tiffany & Co., Hermès, and Christian Louboutin have widely-known proprietary hues (and trademark rights in them), newer efforts by Bottega Veneta and Valentino, for instance, have brought color trademarks back into the spotlight. As such, issues that companies face in successfully claiming rights in color marks – and some of the strategies for doing so – are proving to be particularly relevant. 

As I noted in Part I of a Primer on Color Marks, the notion that colors can act as indicators of source is not new, with the ability of companies to rely on trademark law – a form of intellectual property protection that applies to “any word, name, symbol, or device, or any combination thereof” that is used to “identify and distinguish” one’s goods or services from those of others – to protect proprietary hues dating back to Qualitex Co. v. Jacobson Products Co. case in 1995, in which the U.S. Supreme Court decided that a single color can operate as a trademark upon a showing of secondary meaning, and U.S. Court of Appeals for the Federal Circuit’s determination in the Owens Corning case a decade before that. 

Even though it is well-established that companies can amass rights in (and registrations for) single color trademarks, what is a bit less clear is what that actually entails for brands beyond the immediate use-in-commerce element, and what is standing in the way of registration given that just one-third of trademark applications for color marks are registered by the U.S. Patent and Trademark Office (“USPTO”) each year. 

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