Trademark the Rainbow

By Melissa M. Chapman

You may have heard someone say that a company owns a color. Perhaps you have heard that Louboutin owns the color red, or that Tiffany & Co. owns robin’s egg blue. And while there is some truth to these statements, they are not entirely accurate.

Trademarks are an important aspect to a business’ success. Trademarks potentially are anything that could be perceived by consumers to identify one merchant’s goods and to distinguish those goods or services from the goods of other merchants, including words, letters, logos, other designs, sounds, scents and, last but not least, color. Indeed, the Supreme Court held in 1995 that colors could be protected and registered as trademarks under certain conditions. 

Did you buy a high-heel shoe with a contrasting red sole? You know it is a Louboutin shoe. Have a package delivered by a brown truck? Your package was delivered by UPS. Receive a diamond ring that came in a blue box? That ring is from Tiffany & Co. Here are a few examples of colors registered as trademarks with the US Patent and Trademark Office:

It is important to note that just because a color is registered as a trademark, this does not give the trademark owner exclusive rights to the color for all goods and services. For example, Louboutin has a trademark registration for the color red for a “lacquered outsole on footwear that contrasts with the color of the adjoining (“upper”) portion of the shoe” for “women’s high fashion designer footware.” You can read more about the history of the famous red heel shoe here. 

However, Louboutin’s right to the color red is contrasted with the rights of Coca-Cola’s red on beverage cans, Target’s red (in its logo) for a general retail store, and Campbell’s red on its soup cans. The extent to which a trademark owner can prevent others from using its mark, including a color mark, is limited to cases where the concurrent use of the parties’ marks would create a likelihood of confusion among consumers in the marketplace. In the above examples, each of Louboutin, Coca-Cola, Target and Campbell’s use their color red in sufficiently different markets that consumers are not likely to be confused, , for example, that Louboutin’s red-soled shoes originate from, are sponsored or are in some way associated with Coca-Cola, or visa versa. Similarly, it is unlikely that consumers would be fooled into thinking they are purchasing a can of Louboutin’s tomato soup, or Campbell’s pointy pump with 100 mm stiletto heel in size 38. In contrast, the parties’ markets were much closer in the case of Louboutin v. Yves Saint Laurent, both in the designer apparel field, where the U.S. Court of Appeals for the Second Circuit recognized Louboutin’s trademark rights in its red soled shoes, but was not willing to extend Louboutin’s rights to YSL’s sale of a monochromatic red shoe where both the sole and the remaining parts of the shoe were red. 

As more companies continue to adopt color-centric branding, we may see even more colors of the rainbow become protected as trademarks. As with any other type of trademark, brand owners should be aware of the potential for protecting their own colors, and the options for diligently enforcing their rights. 

Melissa M. Chapman is an associate attorney at Fishman Stewart and hopes one day to have a closet full of Louboutin shoes. Check out her full bio here.