Rules for Protecting Your Brand's Color, in Black and White

Lessons From Louboutin, UPS, Tiffany and Others

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A single word or logo conveys powerful brand messaging in an efficient, uncluttered way. Likewise, with careful advertising strategy and execution, a single color can itself be a compelling brand.

Most everyone is familiar with the red-soled high heels sold by Christian Louboutin. Many also know about the designer's legal battle with Yves Saint Laurent's competing pump, which is entirely red, including the sole. YSL disputes that Mr. Louboutin has an exclusive right to the color red.

Last year, a New York federal court found that he was unlikely to prevail against YSL. Mr. Louboutin appealed to a U.S. Court of Appeals, where soon a decision is expected that will offer additional guidance on whether and how a single color can serve as a brand, particularly in fashion.

Until the 1980s, U.S. law refused to recognize a single color as a brand (color combinations, however, had long been protectable). The principal reasons were "color depletion," in the sense that there are a finite number of colors, which might not permit every competitor to own "their color"; and "shade confusion," referring to the difficulties courts would face in determining whether use of one shade of a primary color infringed another's shade.

'Think Pink'
That all changed when Owens-Corning launched the "Think Pink" campaign for its fiberglass building insulation. In 1985, a U.S. Court of Appeals in Washington ruled that the company had the right to prevent others from using pink for insulation.

Why was Owens-Corning successful? It planned a well-coordinated strategy, with good legal advice on how to secure protection. First, insulation was an excellent product to be branded in color: because it was traditionally not colored (or colored in an unremarkable way), competitors couldn't really argue the color-depletion theory. Second, pink was arbitrary for insulation, as it conveyed no product attributes; again, competitors could claim no reasonable disadvantage from not being able to use pink for insulation materials.

Owens-Corning also reinforced the color-product link through use of the "Pink Panther" cartoon character and theme music. Owens-Corning told consumers to always "Think Pink."

Years later, in another case, the U.S. Supreme Court reiterated that a single color can indeed be a brand, so long as the color is in no way functional and the public strongly associates the color and the specific advertiser's product.

A number of companies have tried to protect single colors, with mixed results.

Good Humor failed to protect the color white for its trucks and uniforms. Brunswick could not own the color black for outboard engines, and Pepto-Bismol couldn't get pink.

On the other hand, UPS has protected brown for its trucks and uniforms. Tiffany owns "robin's egg blue" for its boxes and bags, and 3M "canary yellow" for its adhesive notes.

Tips for Advertisers Wanting to Promote a Single-Color Brand
1. Pick the "right" color. Could competitors argue that the color is functional, or that it lends itself to a less expensive, better-quality or more efficient product? Pick a color that is arbitrary, or at least unusual, in relation to the product. Reference advertising-color theory for emotions typically conveyed by colors.

2. Pick the "right" industry. How many significant competitors are there? Has color traditionally served any function (e.g., gradation, safety, aesthetics)? Will anticipated brand or product extensions work with the selected color?

3. Commit to tight messaging, now and in the future. Advertising should not link the single color to an attribute that competitors may want to convey. In ruling against Mr. Louboutin, the trial court noted his admission that red is "engaging, flirtatious, memorable, [a] color of passion."

4. Register a single color as a trademark at the U.S. Patent and Trademark Office. The timing, details and options for formal protection are critical and must be vetted with experienced legal counsel before registration is undertaken and a campaign is selected.

5. Weave the color into advertising messaging in creative (but nonfunctional) ways. UPS asks "What can Brown do for you?" and Tiffany inspires jewelry from a "blue box."

The appeals court will be rendering its decision soon in Mr. Louboutin's case. Whatever happens will influence the protectability of a single color in connection with fashion but will not foreclose single-color branding in appropriate instances.

ABOUT THE AUTHOR
Robert W. Zelnick is a partner in the Washington office of McDermott Will & Emery, a global law firm.

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