Published in the Union Leader (7/17/2017)
Q: I recently read in this paper that Tough Mudder stopped a local rotary from using the color orange to promote its annual charity run because Tough Mudder owns a federal trademark relating to the color orange. Can my company register a color as its trademark and then stop competitors from using that color in their promotional materials?
A: As a general concept, yes, a business can obtain trademark rights to a particular color if the consuming public strongly associates the color with its products or services.
Classic examples are the pink used to promote Owens Corning fiberglass or the dark brown that signifies a UPS truck or service. Both companies hold trademarks to those colors within their particular industries. And, indeed, Tough Mudder holds a trademark covering its use of orange to promote its brand of races.
However, the circumstances in which a business can obtain trademark protection for a particular color are very limited. A business simply cannot register a color as a trademark and then use it to block its competitors from using that color.
Instead, before a color can be given trademark status, it must have obtained strong “secondary meaning,” which means that the color has become a unique identifier of the source of certain goods or services. That is a high bar to overcome to obtain a trademark registration.
Target and Coca Cola can demonstrate that the consuming public associates the color red with their underlying goods and services. On the other hand, a local auto repair shop that uses red for its branding, for instance, could not block other shops from using red because the general consuming public likely does not associate red with one particular auto repair shop.
Another limitation is that if a color is “functional” in its use, it is not entitled to trademark protection because it would be unfair to prevent competitors from using a color that has functional value. For instance, a court held that pink could not be a registered trademark for Peptol-Bismol because the color pink is functional in that it is soothing and has therapeutic value in treating upset stomachs.
In short, if a business successfully has obtained strong public association of a particular color with its products or services, it may be able to obtain trademark protection for the color, but there are various challenges and restrictions.
Jeremy Walker is a director in the litigation department at McLane Middleton with an emphasis on intellectual property litigation and construction litigation. He can be reached at firstname.lastname@example.org.
Know the Law is a bi-weekly column sponsored by McLane Middleton, Professional Association. We invite your questions of business law. Questions and ideas for future columns should be addressed to: McLane Middleton, 900 Elm St., Manchester, NH 03101 or emailed to email@example.com. Know the Law provides general legal information, not legal advice. We recommend that you consult a lawyer for guidance specific to your particular situation.