Can a Company “Own” a Color? A Look at Trademark Protections
The promotional campaign for the Barbie movie was awash in pink — or, more specifically, Barbie Pink. The color was splashed on everything from Google’s search page to a billboard that simply said “July 21” in Barbie script. Anyone familiar with the brand would know instantly that it referred to the film’s release date.
Barbie has been associated with a range of pink shades, but the official Barbie Pink is Pantone 219. Mattel has used it on everything from packaging to doll clothing and accessories, related toys, media, and more. The company does not have a registered trademark in Barbie Pink, but claims the color has become a recognized brand through consistent use. It fiercely protects the color against any use by competitors.
When a trademark is registered, the owner is entitled to use the ® symbol and gains a broad range of protections under federal law. Owners of unregistered, common-law trademarks may use the ™ symbol and are entitled to certain protections under the Lanham Act and state laws.
A few companies have obtained registered trademarks for their signature colors. Tiffany Blue (Pantone 1837) and UPS’s Pullman Brown have both been trademarked since 1998. Ironically, the first color to be trademarked was pink — the color of Owens Corning’s fiberglass insulation.
Pink Leads the Way in Trademark Protection
Owens Corning invented a process for spinning fiberglass into wool in the 1950s, creating the first all-fiber insulation. To distinguish it from other types of insulation, the company decided to dye it red. It unexpectedly came out pink, but Owens Corning executives decided to use it until they could come up with another shade. To their surprise, contractors began asking for the “pink insulation,” and they recognized a marketing opportunity.
Owens Corning attempted to register the color pink for fiberglass insulation in 1980, but the U.S. Patent and Trademark Office denied the registration. The Trademark Trial and Appeal Board found no inherent bar against trademarking a color. However, the Board affirmed the denial on the basis that Owens Corning had not established that the color pink distinguishes its product.
Owens Corning appealed the decision to the U.S. Court of Appeals for the Federal Circuit, which reversed. The court found that Owens Corning’s application met all the criteria for a trademark prescribed in the Lanham Act. The court also held that Owens Corning had submitted sufficient evidence showing that the pink color had acquired “secondary meaning” such that consumers use it to identify the product.
Supreme Court Holds Color Can Be Trademarked
The Lanham Act does not mention color specifically, and other courts of appeal came to different conclusions regarding the use of color alone as a trademark. The Supreme Court put the matter to rest in 1995 in Qualitex Co. v. Jacobson Products Co. Qualitex has used a green-gold color for its dry cleaning press pads since the 1950s. When a competitor, Jacobson’s, began selling press pads in a similar color, Qualitex sued them for unfair competition. Qualitex then registered the color as a trademark and added a trademark infringement claim. The company won in district court, but the Court of Appeals for the Ninth Circuit set aside the judgment.
The Supreme Court took the case to resolve the circuit split. After analyzing Jacobson’s arguments, the Court held that “no special legal rule prevents color alone from serving as a trademark.”
To be eligible for trademark protection, a color must meet four criteria:
It must distinguish the product from its competitors.
It must be associated with the product through commercial use (secondary meaning).
It must not affect product cost or quality (putting competitors at a disadvantage).
It must not be functional or have a utilitarian advantage.
Only Some Colors Qualify
Trademarking a color isn’t easy, and few companies have met all these conditions. Pepto-Bismol failed in its attempt to trademark its pink color. A study found that patients were more likely to take the medicine because of its color, so the court found that it was functional. General Mills was unable to trademark the yellow color of its Cheerios cereal box because other cereal boxes used similar colors. The color didn’t distinguish the product from competitors.
Mattel has filed trademark applications for Barbie Pink several times, but abandoned each of the applications. Nevertheless, the company has fiercely protected its brand — although not always successfully. In 1997, Mattel sued MCA Records for “unfair competition and trademark dilution” for the song “Barbie Girl” by the band Aqua. Among other things, Mattel cited the use of Barbie Pink in the record’s packaging and video.
The court ruled in favor of MCA, finding that Mattel “cannot show that its use of the color pink has acquired secondary meaning.” Mattel appealed the decision to the Ninth Circuit, which upheld the ruling. (Judge Alex Kozinski famously closed his opinion by stating, “The parties are advised to chill.”) The Supreme Court declined to hear the case.
Perhaps the promotional blitz surrounding the Barbie movie will give Mattel a stronger argument that Barbie Pink distinguishes its brand. Meanwhile, competitors should be aware that colors can be trademarked, and they may face litigation for alleged infringement.
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