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The Color Of Your Business

November 28, 2017
Jason Marin

While most are familiar with the fact that names and logos can be used as trademarks for a business, many are unaware of the fact that colors can serve as trademarks and be protected and enforced as such. A company can assert its trademark rights in colors if it can show that consumers have come to recognize the colors as indicating the origin of the goods.

The Supreme Court has ruled that color, both individually and in combinations, can also be the subject of trademark registrations with the PTO. Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995). To obtain federal registration on the principal register for a color as a trademark, the chosen color must not be functional to the goods or services, and it must have acquired distinctiveness. A color that is not functional, but has not acquired distinctiveness may still be used as a trademark, but may only be registered on the supplemental register. A color that is functional cannot be registered and the courts have a wide range of freedom in how they can interpret the functionality of a color. The courts will allow a color to be a mark unless doing so would grant the trademark owner a utilitarian monopoly separate from marketing or source identification.

The ability of colors to serve as trademarks has recently been confirmed in federal courts. On October 13, The U.S. District Court for the Western District of Kentucky ruled that tractor-maker Deere & Co. could stop a competitor from using its trademark green-and-yellow color scheme on agricultural equipment throughout the U.S. (Deere & Co. v. Fimco Inc. , W.D. Ky., No. 15-105, 10/13/17 ). The court held that the competitor, Fimco Inc., intentionally chose to sell its “Ag Spray Equipment” agricultural equipment using green and yellow so as to create an association with Deere’s brand. The court found that FIMCO’s use of green and yellow was likely to cause confusion among purchasers as to whether its agricultural equipment was manufactured by or endorsed by John Deere. The court also ruled that John Deere’s green and yellow color combination qualified as a “famous” trademark since as early as the late 1960s and that FIMCO intentionally chose green and yellow to create an association with the John Deere brand.

The key issue in enforcement of a color trademark is the scope of protection afforded by the use or registration of the mark. Specifically, the use of a color cannot prevent all uses of said color, and enforcing the mark will require analysis of how the color is specifically used and the scope of the specific source identifying element. For example, one case found that a protectable trademark on the color of shoe soles only applied to shoes where there was a contrast between the outsole and the remainder of the shoe, despite this not being specifically restricted in the registration.

By following the guidelines set forth by the various courts, protecting and enforcing the color(s) of your business can become a valuable and strong tool for growing a brand.

This article is a publication of MWH Law Group LLP and is intended to provide general information regarding legal issues and developments to our clients and other friends. It should not be construed as legal advice or a legal opinion on any specific facts or situations. For further information on your own situation, we encourage you to contact the author of the article or any other member of the firm.

© MWH Law Group LLP 2017. All rights reserved.



Jason Marin
Senior Counsel, New York

P: (414) 436-0353 
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