Do corporations have the right to “own” colors?
A threatening letter from one of the world’s largest telecom companies found its way into Daniel Schreiber’s mailbox one summer day in 2019.
It accuses Schreiber’s startup, Lemonade, of trademark infringement in its letter to Deutsche Telekom AG (the parent company of T-Mobile). The name T-Mobile hadn’t been used by Schreiber. The logo and tagline of the company hadn’t been appropriated by him. His business wasn’t even cell phones.
When he read on, he realized he had used the color magenta in his “crime.”.
It was once thought that trademarking individual colors was impossible for companies like T-Mobile.
The use of a color as a representative of a brand can be claimed as a form of “ownership” by the company — think robin egg blue jewelry boxes, brown delivery trucks, or orange scissors.
What makes a single corporation able to claim dibs on a color? What is the impact of this exclusivity on its competitors?
History is filled with colour
A trademark, copyright, and patent are three of the most common intellectual property applications.
In addition to filing all of these, corporations often use trademarks to (quite liberally) protect anything associated with their brand. A company’s good or service can be identified and differentiated from its competitors by words, names, symbols, or devices.
An exclusive right to use a trademark belongs to a company in its respective industry when it is granted.
Colors did not qualify as trademarks, by themselves, for many years.
The US Patent and Trademark Office rejected attempts to trademark a single color, despite companies successfully trademarking color combinations (e.g., Campbell’s soup labels). In the agricultural equipment industry, for example, John Deere would not be allowed to claim the color green.
It was argued that single color trademarks should not be issued for several reasons:
- Approximately 1,867 Pantone colors exist; if every brand claims the same color, we’ll eventually run out.
- It would be difficult for consumers to tell the difference between slight shades of colors claimed by brands because of shade confusion.
When this stuff came along, everything changed:
Owens-Corning makes fiberglass insulation (which goes behind our walls) for this project.
Fiberglass insulation companies were fiercely competing with Owens-Corning in the late 1950s. Owens-Corning decided to dye their product to distinguish itself from other products of the same “naturally tan” hue.
Pink insulation was used as a marketing tool for the next 30 years: The company adopted the slogan “think pink,” used the Pink Panther as a mascot, and spent tens of millions of dollars promoting the color.
Owens-Corning successfully trademarked a color in 1985, after a five-year legal battle.
A second company, Qualitex, took its trademarked green-gold dry cleaning pads all the way to the Supreme Court ten years later. It opened the floodgates for companies to begin filing their own color trademarks after the court ruled that color can be used to identify a brand.
How does a color become a trademark?
Numerous companies have successfully trademarked single colors since that Supreme Court decision.
UPS trademarked its Pullman Brown the same year Tiffany & Co. trademarked its famous blue. 3M trademarked its canary yellow color for Post-it notes. Deutsche Telekom AG signed a patent for T-Mobile’s magenta.
Several you wouldn’t expect are trademarks pending, including one on yellow for bats by Wiffle Ball, Inc., and one on purple for the estate of late musician Prince.
Businesses aren’t the only ones who can use these trademarks. It is protected by Pantone 542 at The University of North Carolina at Chapel Hill and Pantone 1599 at The University of Texas at Austin.
McDonald’s red and yellow, for instance, or Facebook’s blue, are some of the brands that trademark certain colors. There is, however, something far more rare about these companies: they have trademarked literal swatches of color.
According to Jeffrey Samuels, emeritus professor at The University of Akron School of Law, businesses usually do this when their business model relies on a particular color. To prevent other companies from using a color, it will trademark it.”
Samuels points out that a company owns a color trademark only as it relates to a specific product or service.
Think about Prince’s Paisley Park Enterprises’ purple trademark, for instance. Purple alone is the trademarked image — there are no words, logos, or other branding elements. The color purple will be available for use at live music venues if the application is granted. According to them, purple alone is enough to identify their brand.
In order to successfully secure a trademark for a single color, a firm must demonstrate:
- The product being distinguishable from its competitors and the company being identified as the definitive source for the product is said to have achieved a “secondary meaning”
- Costs and quality aren’t affected, putting competitors at a disadvantage
- Doesn’t serve any functional purpose
IP lawyer Robert Zelnick explains that a color must be quite arbitrary to be trademarkable: It cannot be necessary for the production of the product or be utilitarian.
It can be extremely difficult to prove all of his claims sometimes.
A trademark application by General Mills for its Cheerios box has twice failed due to the fact that too many cereal companies use yellow in their packaging.
In a court decision, Pepto-Bismol was denied its trademark application because pink had a therapeutic effect on customers.
War of the colors
Color trademarks are often aggressively enforced in court — and competitors often challenge the right to monopolize certain hues. This is what Lemonade’s CEO learned.
Color “ownership” has been the subject of dozens of lawsuits arising from these controversial trademarks over the years:
- As part of the suit, Mattel sued MCA Records for, among other things, allowing Aqua to use the trademarked pink color on its cover for “Barbie Girl.” The judge famously advised both parties to “chill.”
- An orange candy bar packaged by Mars was the subject of a lawsuit by Hershey in 2010. Later, the lawsuit was dropped.
- As a result of Yves Saint Laurent’s violation of Louboutin’s trademark red shoe soles in 2011, Louboutin won the case.
- A $54m judgment was thrown out on appeal against a competitor in 2015 for copying DeWalt’s black and yellow colors.
Color trademarks have been particularly protected by one company.
It has been at least 12 years since Deutsche Telekom AG, T-Mobile’s parent company, tried to stop competitors from using magenta.
A variety of surrounding hues can be considered magenta despite the company’s trademark covering only a specific variation of the color ( Pantone Rhodamine Red U). In addition to telecommunications, Deutsche Telekom has also been able to protect its trademark in the fashion and healthcare industries.
The company went after rival European wireless carrier Telia in 2008. Later, Engadget was asked to remove magenta from its mobile logo. T-Mobile customers would be confused if AT&T subsidiary Aio Wireless used magenta, a judge ruled in 2014.
In Germany, where Deutsche Telekom AG is headquartered, Lemonade is complying with T-Mobile’s demand by changing its marketing materials’ color. Additionally, Deutsche Telekom’s magenta trademark has been challenged in Europe by the company.
Firms that spend millions on marketing and branding strategies can find it difficult to make changes like this.
However, legal fees can also add up for companies that continuously monitor color trademark violations, raising the question:
Does trademarking a color make sense?
Black and white trademarks are protected by default in all color variations, regardless of the type of trademark. No one can take the red and yellow McDonald’s logo, make it purple and green, and claim it as their own.
What’s the point in trademarking a color when a brand likely already has so many other protections?
Colors are only used by brands when they are critical to their brand, sales, or marketing, says Zelnick.
The color blue is the color of choice in all trademarks (including logos)
The effect of color on consumer behavior is well known to most marketers. Based on surveys and studies, it has been found that:
- Consumers use color to make initial judgments about a product 62%-90% of the time.
- Consumers believe that packaging color indicates quality 52% of the time.
- There is an 80% increase in brand recognition when color is used.
Go ahead and try making your entire brand one solid color if you’re considering it. Avoid magenta at all costs.