August 1995
The use of distinctive colors to identify products can be seen everywhere in our economy, from personal care products sold in pharmacies to industrial equipment. It is obvious that manufacturers have long used colors to help purchasers identify their goods. Until very recently, however, it was an open question whether trademark law protected distinctive colors that had become strongly associated with a particular product or manufacturer.
The United States Supreme Court recently answered this question in the case of Qualitex Co. v. Jacobson Products Co. In this case the Supreme Court held, for the first time, that under the proper circumstances a single color may qualify as a protectible trademark.
The Qualitex case arose in 1989 when Jacobson Products began manufacturing and selling a “Magic Glow” dry cleaning press pad in a green-gold color. This color was identical to the green-gold color which Qualitex had been using for its “Sun Glow” dry cleaning press pads since 1957. Although the color hid stains — and therefore had a practical as well as an aesthetic purpose — Qualitex registered the green-gold color with the Patent and Trademark Office in 1991 and sued Jacobson for trademark infringement.
The trial court found Qualitex’s registered green-gold mark was valid and infringed by Jacobson’s look-alike press pads. Jacobson appealed this decision to the federal court of appeals, arguing that to allow a single color to be protected as a trademark would lead to “shade confusion.” In other words, if the color was trademarked, disputes would arise as to whether a competitor could lawfully use other shades of that same color. Jacobson also urged the court of appeals to apply the longstanding color rule which barred the registration of a single color as a trademark.
The court of appeals accepted Jacobson’s arguments and held that color alone could not be trademarked, reversing the trial court’s decision. The court of appeals also ordered that Qualitex’s trademark registration be canceled. Qualitex petitioned for review by the Supreme Court.
The Supreme Court’s decision on March 28, 1995 opened up a new domain in trademark law. The Supreme Court rejected a number of arguments, ranging from practical to legal technicalities, in opposition to the protectability of a single color trademark. Most interesting, in our view, was the argument that since colors are in limited supply, allowing companies to appropriate colors will soon lead to the “depletion” of all of the attractive colors in each product line. The Supreme Court’s response to this argument was that if the use of a color related to the “functionality” of a product, it could not be trademarked. Examples were black outboard motors (on the theory that black motors appear smaller than motors in other colors) and blue fertilizer (indicating the presence of nitrogen).
It seems to us that the Supreme Court’s response to the argument of “color depletion” was something of a non sequitur. Even assuming that the “functionality” rule is applied liberally in this context, there is still a risk that attractive colors may be seized by early adopters, forcing companies later entering the market to chose a less attractive color and putting them at a competitive disadvantage.
TLB Comment : Although the principle that a single color may receive trademark protection is now the law of the land, the “owner” of the color must still show that it has used the color on a particular product long enough that the purchasing public has come to associate the color with that brand. In the lexicon of trademark law, this is termed “secondary meaning.”
Of course, the law would not be the law if a major Supreme Court decision didn’t raise as many questions as it answered, and the Qualitex case is no exception to this rule. For example, trademark law permits one to develop a “family” of marks based on a common characteristic, often a prefix or suffix (e.g., WordPerfect). It is unclear how this principal will carry over into the context of single-color trademarks. For example, we can envision a company like Johnson & Johnson creating a “family” of home cleaning products using the same color packaging, and thereby obtain an artificial monopoly over the color. In this scenario, the risk of color depletion may be quite real.