Should I Include Words, Logos, Colors in My Trademark Registration?
What is a color claim in trademark application?
The more common type of trademarks pertains to words, logos, and designs. However, in certain situations a business may consider a color trademark. What is a color trademark? It is the use of a particular color or combination of colors that will be used as a distinctive identifier of a source of goods or services. Therefore, the color alone cannot be distinctive no matter how unique it is. It is only the color’s connection to the goods and services and distinct nature that makes it a source indicator. This is set forth in Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995):
[A] product’s color is unlike “fanciful,” “arbitrary,” or “suggestive” words or designs, which almost automatically tell a customer that they refer to a brand… over time, customers may come to treat a particular color on a product or its packaging (say, a color that in context seems unusual, such as pink on a firm’s insulating material or red on the head of a large industrial bolt) as signifying a brand. And, if so, that color would have come to identify and distinguish the goods, i.e., “to ‘indicate’ their ‘source’…”
Examples of color claims in trademark:
Tiffany & Co. owns rights to their signature blue (Pantone 1837) for jewelry stores and packaging.
UPS holds trademark rights to brown, but only for delivery trucks and worker uniforms.
Hershey holds a trademark for the orange color associated with its Reese’s branded peanut butter cups.
Color is an issue only when dealing with design marks, such as logos, that have elements of graphic design. Color is not normally an issue in trademark applications for word marks, because words do not usually contain graphic design elements.
Criteria to file for a color claim in trademark application
Generally, a color trademark is difficult to obtain because the applicant must demonstrate that the color(s) have acquired distinctiveness. To be able to claim a trademark on the use of a color for your product and service the color:
Must identify and distinguish your good or services from other similar goods and services sold by another company.
For example, a company makes a surfer board but only in their one unique color that is attached to their branding. As a result, customers associate surf boards with that distinct color as being made by that company.
Cannot be essential to the use or purpose of the good or service.
For example, if you are making a particular textile and that product remain white to function properly, then you would not be able to trademark the color white for that textile.
If you are choosing to add a color claim when filing a design mark application, you must specify the exact colors in the mark. Your drawing must also be uploaded in color.
The Benefits and Drawbacks of Registering a Color Trademark
In the event you obtain a color trademark registration you should be proud of yourself since they are difficult to obtain. You will be able to defend against competitors using that specific color in association with the particular good and services. Thereby, competitors should not be able to make products that use your color in an attempt to leverage your branding for their own benefit. However, you will have also effectually limited the scope of your protection to just one particular color. There is a possibility that someone could make a similar design and use a completely different color arguing that the color difference is enough to avoid encroaching upon your trademark. Of course, the United States Patent and Trademark Office (USPTO) will look at it on a case-by-case basis. But by claiming a color in your trademark, you have now closed one door but opened another.
Another downside of registering your mark with a color claim is that you will not be able to change colors when using the mark to sell your goods or services. A registered trademark in color requires that you use the exact same design mark with the same colors to maintain your registration. If you plan on changing the colors of your goods or services and want those new colors to also be trademarked, you will need to file a new trademark application.
Will a Black-and-White Trademark Registration Prevent the Limitations Associated with a Color Claim in a Trademark?
If you file a trademark for a mark or design without a color claim, generally you will have broader rights and more flexibility in usage. The trademark owner will be free to use any color as part of their registration. Often this is referred to as registering a design mark in black-and-white (“grayscale”). The absence of color in a trademark registration does not give competitors or trademark infringers the defense that they design uses a color difference then the color claim associated with your trademark registration. Since a trademark without a color claim offers broader rights, why would anyone want to register a trademark with colors?
Again, we must look at the needs of the applicant. Colors can play an important role in distinguishing products from others. We refer you the examples we listed above: Tiffanys, UPS, and Hershey’s Reese’s peanut butter cups. So, if an applicant thinks a color claim with their trademark application is essential to their brand and they wish to prevent the use of that color in association with that good and services by others, then it may make sense to include a color claim in your trademark application.
Do I Have to Choose Between a Color Claim and No Color Claim in a Trademark Application?
Absolutely not! You can file for as many trademarks as are willing to finance and complete. If you want the most protection for your goods and services you could always file a design mark application with a color claim and a second without a color claim. If that design uses wording, you could also apply for a word mark application for the wording in standard character format used in your design.
If you have any questions regarding trademark law or the federal process used to obtain a trademark, we would be happy to help.