Visit me at joygoudie.tech for help with protecting your COLOR BRAND.

The company behind Wonderful Pistachios is suing a smaller brand called Nut Cravings for trademark infringement for ripping off the company’s green-and-black pistachio packaging.

Consumers respond to color. You are building a new brand or have built a brand. You have done a market analysis or experience has proven that one color is associated with your brand.

There are certain packaging or product colors that tell the consumer THIS IS THE BRAND I AM LOOKING FOR. That certain shade of blue box for your birthday, those must have, red soled shoes, and even the green-and black packaging for pistachios.   This article is meant to help you understand what the options are for protecting the color that tells the consumer that THIS IS THE BRAND I AM LOOKING FOR.

If the color (a single color or color combination) you are using for your brand creates a commercial impression without words you need to develop an intellectual property protection strategy around that color.

There is an area of overlap between copyright and design patent…an ornamental design may be copyrighted as a work of art and may also be the subject matter of a design patent.   A design patent and a trademark may be obtained on the same subject matter… and the underlying purpose and essence of patent rights are separate and distinct from those pertaining to trademarks.

Design Patent

A design patent protects the visual characteristics of an article (object). Color can be considered an integral part of the disclosed and claimed design. A design patent excludes others from using the design for 15 years.

A design patent may be used to support a proposed trademark distinctiveness claim.

The trademark and design patent work together to protect the COLOR BRAND.

Trademark

If the design identifies the product and it is established that a similar design causes confusion in the marketplace the infringer can be stopped from using the trademarked design.

Color marks are marks that consist solely of one or more colors used on particular objects and are never inherently distinctive.

The burden of proving that a color mark has acquired distinctiveness is substantial. See In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985) (the color pink, as uniformly applied to fibrous glass residential insulation, shown to have acquired distinctiveness as a trademark for the goods); In re Benetton Group S.p.A., 48 USPQ2d 1214 (TTAB 1998) (evidence insufficient to establish that green rectangular background design had acquired distinctiveness as applied to clothing and footwear); In re American Home Products Corp., 226 USPQ 327 (TTAB 1985) (tri-colored, three-dimensional circular-shaped design found to have become distinctive of analgesic and muscle relaxant tablets); In re Star Pharmaceuticals, Inc., 225 USPQ 209 (TTAB 1985) (evidence found insufficient to establish that two-colored drug capsules and multi-colored seeds or granules contained therein had become distinctive of methyltestosterone)

Christian Louboutin’s trademarked red sole heels is protected only for a red sole with a contrasting color for the remainder of the shoe, Yves Saint Laurent was able to avoid trademark infringement when the entire shoe was a uniform red color.¹

Copyright

An original design provides the owner with the right to exclude use of the design in any form for a period of at least 70 years. An independent developer is not excluded from using the same design. An ornamental design may be copyrighted as a work of art and may also be subject matter of a design patent.

Robin’s-egg blue for TIFFANY’s boxes and bags (U.S. Reg. Nos. 2,359,351 and 2,416,795)

• Pink for OWENS CORNING home insulation (U.S. Reg. No. 1,439,132)
• The color combination of green and yellow for JOHN DEERE equipment (U.S. Reg. No. 3,877,114)
• •The BURBERRY tartan pattern for clothing, handbags, mobile phone cases, etc. (U.S. Reg. No. 4,123,508)
• See 37 C.F.R. § 2.41(a)(2); 8-1200 Trademark Manual of Examining Procedure (TMEP) 1202.
• See MPEP 1512 Relationship Between Design Patent, Copyright, and Trademark.