Colour Trademarks: What you Need to Know
The difficulty with colour as a brand identifier is that there is no interim legal protection available to rely on as you build up recognition. You may remember from a previous blog post that Coca Cola had design protection of the bottle shape available as an interim measure while they built associations to the bottle shape through their advertising.
In practice, there is a constant interplay between use of identifiers and ownership of them. If you have legal rights over a brand identifier you can maintain its uniqueness for your brand, and reduce the scope for customer confusion, because there will be legal remedies available to stop the copyists. Enforcement of your rights prevents market confusion. It’s important to note, that you’re less likely to need to go to court if you have solid legal rights to rely on.
Where you do not have any legal rights in an asset, as you won’t have with colour in the early days of your use of a colour, you are largely powerless to tackle competitor copying. Depending on your situation, you might decide to just stop using that colour as an identifier to distance yourself from any competitors who start using your colours.
When choosing colours be aware of what colours are in use in your category so you choose a different colour to what anyone else is using. Like that you stand more of a chance to be distinctive, and potentially to ultimately secure that colour as a trademark. It takes a very substantial marketing and advertising budget, over many years and even then there is no guarantee of successfully trademarking a colour.
The lack of interim protection for colour is the main reason to adopt a different strategy when it comes to colour. As well as ensuring you choose a colour that is different to what competitors are using, (rather than choosing colours based on other factors such as their intrinsic meaning), you should keep an eye on colours competitors start using after you’ve made your choice, so you can decide how to deal with a situation where competitors start using the same colour.
Competitors Copying Your Colour
Staples, Office Depot and Office World were the 3 brands left standing in their category. They had become confused for one another by consumers to such an extent that people would shop at their premises and then proffer the card of a competitor quite unaware that they were not in that competitor’s store. They were all using red as a colour and had stylised word marks. None of them was using a symbol. It’s possible that the fact they were all using red led to consumers mistaking them for one another.
Staples was founded in May 1986, Office Depot in October 1986, while Office World was founded in 1991. From a trademark point of view, Staples would not have been using red long enough to have been anywhere close to being able to trademark the colour red at that time. In my view, they should have considered their position once Office Depot launched with red and made some adjustments to their branding.
When you notice that a competitor is using the same colour it’s important to assess the risk of confusion and how to tackle it. Staples might have adopted a two colour approach, or maybe moved to use red just as an accent. They might also have introduced a symbol as an additional identifier.
If you are in the very early stages of a business as Staples was when Office Depot decided to start a similar business using the same colour then making some changes to your identifiers might make sense, as does relying on a range of identifiers apart from colour when you first create a brand. You are powerless to stop competitors using similar colours before colour becomes famous enough for your brand to be able to trademark it.
On the other hand, if you are a substantial brand and have a bigger marketing and advertising budget than a competitor who begins to use the same colour, you might focus more resources on becoming associated with your colour. Having high spending power can act as a disincentive to competitors copying the same colour during that risky period while you are building up recognition for a colour asset – even though legal steps are not available to protect the colour in the interim. Your high spending on promotion means competitors would risk misattribution to your brand if they began using that colour. Depending on what goods or services are involved, they would not want to spend their marketing budget on promoting your brand.
If competitors do copy your colours, consider whether you have sufficient market recognition to trademark your colour or whether the competitor is significant enough to create confusion in using the same colour. Litigation is an option to consider as a way of deterring the use of your colour (for example, you could argue in some countries, like the UK that a competitor is ‘passing off’). It would take very substantial resources to use litigation to deter competitors from adopting the same colour though, because you may probably do not have a strong legal case (due to the difficulty of establishing ‘passing off’). However, the very act of initiating legal proceedings might of itself have the desired result of encouraging a competitor to not continue with its plan to adopt your colour.
The bar to registration of a colour trademark is high and the essential issue is to prevent confusion as to which brand is the source of the goods or services in question.
Household-name brands that have achieved colour trademark registrations include Tiffany’s turquoise, 3M’s yellow, Coca-Cola’s red, UPS’ brown, and Barbie’s pink. The brands that succeed in securing a colour trademark have first become associated with a colour so that they can prove that the colour has a secondary meaning unique to their brand’s goods or services. Secondary meaning is shown by a high volume of advertising involving the colour mark, as well as consumer surveys establishing that a high degree of relevant consumers associate that colour or colour combination with your brand.
The scope of protection a trademark provides is broad and increases the more well known a business becomes. So, if you have a trademark for a particular Pantone colour it prevents competitors from using similar colours if you are a well-known brand. They can copy your positioning, but they must use a different colour.
An example of colour trademarking not being done well or successfully is General Mills’ bid to register the yellow colour of its Cheerios cereal boxes in 2017. They failed, even though the company had used that colour since 1945 because yellow was already widely used in the category. From their example, it’s clear that as well as advertising spend, you should ensure you can stand a chance of establishing secondary meaning in your choice of colour, or combination of colours. They should not be already in use in your industry. Given that the colour yellow was widely used in the category or became widely used later, General Mills’ strategy should have been to change its colour in some way and rely on becoming known for its distinctive use of a colour combination in its category.
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Developing a distinctive brand means focusing on intellectual property which impacts the choice of name as well as identifiers such as the logo, symbols, fonts, characters, colours, any sounds etc that are worth developing to stand out in the market.
