Should I Register My Trademark in Color?
In most (if not almost all) cases, no.
Unless a trademark’s color or color scheme has itself acquired trademark meaning in that the color identifies the source of the goods or services, brand owners should seek U.S. trademark registration for their trademarks in black and white.
Under U.S. trademark law, a registered trademark in black and white receives legal protection for all color combinations and color schemes, including the actual color scheme in use as of the filing date of the trademark application. Benefits of a black and white trademark registration are that it provides the most flexibility for future modifications to a trademark’s color and color scheme and broad enforcement against third party marks that are arguably confusingly similar in sight, sound and/or meaning yet depicted in a different color scheme (a color scheme legally covered by a black and white registration).
Accordingly, when brand owners register their marks in color, when the color itself has not achieved trademark status, they are narrowing and limiting their trademark rights unnecessarily.
However, once a mark’s color or color scheme has achieved acquired distinctiveness, meaning consumers perceive a color or color scheme itself as indicating the source of the goods or services – brand owners should consider seeking trademark registration for the specific color or color scheme.
Examples of federal trademark registrations claiming colors based upon their source identifying significance include the following:
[Pink for insulation]
[Purple and orange combination for delivery services]
[Blue, red, yellow and green for internet search engine and email services]
Trademark registrations protecting specific colors that have acquired trademark status can provide an additional layer of protection. For example, if third parties adopted the following names for their services, how do you think Google and FedEx would react?
Although the words FedEx and GlobalExpress and Google and Email+ are not confusingly similar, obviously the colors schemes of the marks are the same and thus consumers may arguably believe that the services rendered by these other third parties originate, or are associated, with FedEx and Google based upon the selected color schemes in their marks.
Until a brand owner’s colors and color schemes reach the level of trademark recognition, securing trademark registration in black and white is the practical strategy and one that will offer the strongest and broadest legal protection.
Other Important Considerations
Standard Character Marks – For Word Marks Without Artwork
In addition to seeking registrations in black and white, brand owners should also seek registration for, what is known as, a standard character mark to obtain even stronger protection. For example, a company that uses the mark Acme should seek registration for the mark as a “standard character mark” – shown below (assuming the color purple and/or the stylized font have not acquired secondary meaning):
A registration issued for ACME (standard characters and in black and white) would provide legal protection for the term in all fonts and formats and in all color schemes, including the following:
Why limit your legal protection and branding flexibility?
Certain countries may not provide broad legal protection for black and white and block letter trademark registrations. Meaning that if the mark is used in the marketplace with a color scheme, certain country laws may not recognize a black and white registration as legally covering the mark and its color as used in the marketplace. Therefore, as brand owners expand their trademark rights and registrations internationally, they must take note of other country laws and seek trademark registration accordingly, which may require color mark registrations for certain countries.
Roger Bora is a former U.S. Trademark Examining Attorney, a partner in a major law firm, the creator of this blog and, most importantly, a husband, and a father of an amazing 13-year-old son.