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United States - Supreme Court Holds Color Protectible as Trademark

On March 28, 1995, in Qualitex Co. v. Jacobson Products Co., the United States Supreme Court held unanimously that, "sometimes, a color will meet ordinary legal trademark requirements. And, when it does so, no special legal rule prevents color alone from serving as a trademark."

The plaintiff in Qualitex had manufactured dry cleaning press pads since the 1950's, with a special shade of green-gold. When the defendant, a rival manufacturer of the plaintiff, began to use a similar shade on its own press pads, the plaintiff sued for infringement of its registered trademark, which covered the green-gold color. The defendant counterclaimed to cancel the plaintiff's registration on the ground that color is not protectible. The California trial court held that the plaintiff's trademark was valid and infringed by the defendant. On appeal, the Ninth Circuit reversed as to the claim for trademark infringement, holding that the color alone of the pad was not protectible.

The Supreme Court reversed the Ninth Circuit and, resolving a split of authority among the circuit courts, held that the plaintiff's color qualified for trademark protection. The Court focused upon Section 45 of the Lanham Act ("the Act"), which defines a "Trademark" to include "any word, name, symbol or device, or any combination thereof." According to the Court, color may be considered a "symbol" or "device" much in the same way as shapes, sounds and scents have been granted protection as trademarks under similar authority. The Court observed broadly that a person can use color "to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown" and, as such, meets the statutory definition, under Section 45 of what constitutes a "Trademark".

The Court qualified its opinion, however. It observed that there is no "theoretical objection" to finding protectible a color, at least where the color has achieved secondary meaning, that is, when "in the minds of the public, the primary significance of a product feature ... is to identify the source of the product rather than the product itself." Implicitly, the Court held that color alone may not be inherently distinctive. The Court reasoned that a product's color is unlike a fanciful, arbitrary or suggestive word or design, which "almost automatically tell[s] a customer that they refer to a brand." Instead, the Court analogized colors to descriptive marks ("ordinary word[s], normally used for a nontrademark purpose"), which may be registered if they have acquired secondary meaning. Here, the lower court had found that the plaintiff's color had acquired secondary meaning.

The Court also found no objection in the "functionality doctrine" to prevent the protection of color as a trademark. Under this doctrine, if the feature of the product for which protection is sought is useful or affects the cost or the quality of the article, such that granting trademark protection to the feature would put competitors at a significant disadvantage, the feature is not entitled to trademark protection. The Court held that color could, in fact, serve to act as a source identifier and, in this instance, the plaintiff's green-gold color was not functional, since other colors were available for use on the dry cleaning pad. The Court recognized that color may, however, be functional in other situations, citing with seeming approval an appellate decision that, for outboard boat motors, the color black was functional, because it decreases the apparent size of the motor and ensures compatibility with many different boat colors.

After determining that there was no basis under the Act for denying trademark protection to color, at least so long as the color has acquired secondary meaning, the Court addressed each of the defendant's "special reasons" why color alone should not receive trademark protection. First, the Court rejected the argument that courts will not be capable of resolving disputes concerning differences in shades of color due, for example, to lighting conditions. The Court held, however, that the issue of "shade confusion" was no different than other factual analyses routinely performed by courts in trademark cases. Second, the Court found that the limited supply of colors did not justify denying protection to colors in appropriate situations. The Court explained that, if such a "color depletion" problem were to arise, the doctrine of functionality would be available to prevent anticompetitive consequences. Third, the Court distinguished its older cases, which implied that color was not protectible, in view of the adoption of and amendments to the Act, which liberalized trademark law. Fourth, the Court held that trade dress protection was not an acceptable substitute for trademark protection of color because the Act provides benefits to holders of registered marks, which benefits are not available in claims based on trade dress infringement.

In resolving the split in authority, Qualitex makes clear that trademark owners may now seek protection for color alone. The Court's apparent requirement, however, of secondary meaning and implicit holding that color may not be inherently distinctive may be a source of future litigation. It is seemingly inconsistent with the Court's 1992 decision in Two Pesos, Inc. v. Taco Cabana, Inc., wherein the Court relied on the "rule generally applicable to trademark" that all marks are to be treated alike on the spectrum of distinctiveness in order to hold that inherently distinctive trade dress, too, was protectible without a showing of secondary meaning.

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