FRONT Row
C olor a n d b ra n d in g
Can you trademark a packaging color? Maybe, maybe not.
n the m orning o f D ecember 25, several turquoise boxes
O wrapped with white ribbon lay at the foot o f the Christmas
tree. Those packages made our faces light up more than
usual, because we all knew where they were from, and that they con­
tained special delights. It didn’t matter that a member o f our house­
hold had been a seasonal employee at Tiffany & Co. in N ew York City.
That color alone pushed our happy buttons.
We associate that shade o f blue with the famous jeweler, w hich
began using it for its packaging in the mid-19th Century. W hen we
see a brown delivery truck, we know whose it is. Even w ithout our
eyeglasses we know w hat’s in that bottle o f soda with the red label. And
when our stomachs are upset, we reach for that bottle o f pink liquid
on the drugstore shelf. The aforementioned blue, brown and red are
trademarks ofTiffany, UPS and Coca-Cola, respectively. B ut if you’re
thinking pink for Pepto-Bismol, think again.
It’s easy to assume that John Deere has a lock on the green color
used on all o f its machinery. It doesn’t, and there’s a good reason for
that. The company does have trademarks on its name, its green and
yellow color scheme, and its leaping deer symbol.
Color and trademarks have been a legal battle zone for years. Color
combinations to identify brands had long been recognized by US trade­
mark officials (laws vary by country, but there are general consistencies),
but they refused to acknowledge single colors as legally protected.That
changed in the 1980s when O wens-Corning, which had been manu­
facturing pink insulation since 1956, won the right in federal court to
the color pink for its insulation products.
The key to the shift in legal perspective was the issue o f functional­
ity. Features or shapes that are considered functional have a utilitarian
purpose. A commonly applied definition is “a product feature essential
to the use or purpose o f the article or which affects the cost or quality
o f the article.”
Pink is not a functional part o f insulation, so its restriction to
O w ens-Corning would not inhibit any other manufacturer o f similar
products from competing in the marketplace. Moreover, the company
had established the color pink as its identifying hue for three decades,
so now anyone w ho tried to copy it - and they are still trying - would
run afoul o f trademark law.
More recently, in a different case, the US Supreme C ourt restated
that a single color can be a brand as long as the public strongly asso­
ciates the color with the specific product and that the color is in no
way functional.
40 Label & Narrow Web www.labelandnarrowweb.com
By Jack Kenny
Single color trademarks come with restrictions. If Owens-Corning
decides to manufacture a line o f women’s clothing under the “Pink”
brand, it would run headlong into Victoria’s Secret. IfTiffany declares that
buildings or boats cannot be decorated in its shade o f turquoise, it would
be laughed out o f court.The reason is that a color trademark applies only
to the specific industry in which the trademark holder does business.
Another jeweler would be foolish to use turquoise in its branding, but
go right ahead and paint your 1960 Corvette that beautiful shade of blue.
W hat about John Deere and green? The company has been manufac­
turing farm equipment since the 1800s, and green seems to be its color. As
mentioned, its color scheme is protected, but it can’t own green because
it does business in the agriculture industry, and green is the color o f just
about everything that grows, and therefore is functional. Others in the
agricultural equipment business can paint their machines green or use it
in their branding because it’s a functional color, symbolizing vegetation.
W ith the Pepto-Bismol case, the definition o f functionality was ex­
panded into new territory by the court. According to US trademark
attorney David Lizerbram,“Even a psychological value can be functional.
For example, the pink color o f Pepto-Bismol is considered functional.
A court held that the color was functional because it was ‘soothing’ to
patients, thereby providing a psychosomatic effect and therapeutic value
in treating upset stomachs. Because the color pink was found in a study
to make patients more likely to take the medicine and affected them on
a psychological level, the court ruled that Pepto’s competitors needed to
use that color in order to compete effectively.”
In an article posted on his web site, Lizerbram says,“As with all trade­
marks, the color must have a secondary meaning. It must have become
meaningful to a significant portion o f the public as a unique identifier of
the goods or services.Tiffany and UPS can show that when the public
sees their shade o f blue or brown, in connection with their underlying
goods/services (jewelry and delivery services), they immediately think
ofTiffany s jewelry boxes or UPS trucks.”
Here are a few other examples o f when a color may or may not be
isolated by a trademark.
• Ambrit, a maker o f frozen foods, used royal blue in its dessert pack­
aging. N ot long after, the food giant Kraft adopted royal blue for its line
o f similar products. Ambrit took Kraft to court over the use o f the color
in its packaging but lost the case. The judge ruled that royal blue is a
cool color, suggesting coldness to consumers, and therefore the color
has aesthetic functionality.
• The Life Savers Company tried to stop Curtiss Candy Co. from
March 2015

using a pattern o f colors on its candy wrappers. Life Savers claimed
trademark rights on the multi-colored striped theme on its packaging,
which it said represented the multi-flavored candies inside. The court
disagreed, saying that it was a general practice o f the trade for hard candy
manufacturers to market their products in packages with multi-colored
backgrounds to indicate that assorted flavors were inside.
• Bold, broadly used colors aren’t the only kinds that can be protected.
The category now includes accent colors. In 2010,WolfAppliances sued
Viking Range Corp. for using red knobs on its gas stoves.Viking main­
tained that since both manufacturers marked their products with their
company names, the public could not be confused if both had red knobs.
Citing “likelihood o f confusion,” the court disagreed and upheld W olf’s
complaint. The decision used the example o f someone who goes to a
dinner party and notices the hosts range with red knobs.That person
may later be at a showroom, and w ithout remembering the brand name
might think that the Viking range with the red knobs was the one they
had seen at the dinner party, when in fact it was a W olf range.
• The most recent case involves women’s shoes and the competitors
Christian Louboutin and Yves Saint Laurent. Louboutin is well known
for coloring all of its shoes’ outsoles bright red.YSL chose to do the same,
which landed the company in US court as the defendant. A federal ap­
peals court ruled in favor o f Louboutin and upheld its existing trademark
WELCOME TO
OUR WORLD
OF FINISHING
March 2015 www.labelandnarrowweb.com
FRONT Row
registration for its red outsoles. O ne exception is noteworthy:The court
made it clear that the protection applies only w hen the rest o f the shoe
is a different color or colors. Anyone, therefore, is allowed to make an
entirely red shoe.
Lizerbram has some strong advice for companies that might be think­
ing about seeking protection for a brand color:“Ifyou ever want to try to
claim trademark protection for a color, be sure to never, ever, ever suggest in
your marketing or advertising materials that the color has any sort of function.
Does the green tint in your sunglasses help block harmful U V rays? Well,
then it can’t be a trademark. Will kids be happy to swallow this medicine
because o f its fun bubblegum color? N o trademark for you.This is one
o f those situations where the marketing/ advertising and legal sides o f
a business need to be fully in sync from Day 1. There’s no going back
once you’ve shown that your color serves a real world purpose and isn’t
merely ornamental.”
The author is president of Jack Kenny Media, a communications
firm specializing in the packaging industry, and is the former
editor o fL & N W magazine. He can be reached atjackjkenny@
gmail.com.
tiigicon
series 3
The n e x t g e n e r a t i o n
of digital finishing
w w w .a b g in t.c o m
Label & Narrow Web 41
Copyright of Label & Narrow Web is the property of Rodman Publishing and its content may
not be copied or emailed to multiple sites or posted to a listserv without the copyright holder's
express written permission. However, users may print, download, or email articles for
individual use.