The True Colors of Trademark Law

Ann Bartow is a Professor of Law at the University of South Carolina School of Law.

One of the cases that always troubled me when I taught Trademark Law was Qualitex v. Jacobson Products Co., in which the U.S. Supreme Court concluded that colors alone could constitute protectable trademarks.  Colors could always be protected as part of a visual trademark, but colors that are part of a product itself are, it seems to me, always functional. Sometimes the function is utilitarian, such as the orange color of traffic cones to make them more visible. Other times the function is aesthetic, such as when one purchases an orange shirt.

As a general matter, I argue that allowing one company to monopolize the use of a particular color for a product or range of goods and services is unjustifiably anticompetitive. The primary doctrinal arguments I raise against recognizing color-alone trademarks include: aesthetic functionality; the related concept of communicative functionality; uncertainty about the scope of color alone marks; and the very real possibility of color exhaustion, as the palette of commercially
appealing colors for a particular product is likely to be far more limited than the dictionary of attractive and usable words.

I hope you enjoy reading the piece. I’d be very interested in any feedback on the article readers care to provide.

Professor Ann Bartow’s article “The True Colors of Trademark Law: Greenlighting a Red Tide of Anti Competition Blues” is available for download on SSRN here.

One Comment
  1. I quite agree that colour as a trademark can pose problems, but having worked in design for a few years I have to sympathize with the desire to protect your colour choices.

    You mention in your article that “consumers generally do not view colors as source identifiers”. You are probably correct that the logo will override the person’s identification of source, but I do believe (and it’s a common belief in design) that colour plays a role. One of the main things that any book or article on branding will say is “Choose a distinctive set of colours and stick with them.” The value of colour is subliminal. I, for example, truly believe that red no-name colas taste better than blue ones. The goodwill I feel for Coke extends to drinks made by other manufacturers.

    Consider the artificial sweetener example. I’m not convinced the average consumer knows whether they prefer aspartame or saccharin, but I bet they know whether they like Sweet ‘N Low or Equal. The message I think the pink house brand communicates is not “I contain saccharine” it’s “I taste like Sweet ‘N Low”. It would certainly be problematic if Sweet ‘N Low got a trademark on pink and could enforce it against Pepto-bismol, but I can see good reason for them to be able to enforce it against other artificial sweeteners (though I gather they can not).

    Of course, I may give colours more credit than they truly deserve. It’s a common failing of design-writers that they over-estimate the importance of certain factors and when a real person points out that they’re crazy they reply: “it’s subliminal, you noticed, you just don’t know you noticed.”

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