HIGH COURT'S RULING MAY COLOR AD PLANS

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The judicial system came to its senses-at least from the perspective of Qualitex Co.-in a recent decision that upheld the trademarking of a color.

The U.S. Supreme Court's unanimous decision recognizes that a product can be known just as much by its color as by its name. The decision might even open the door to trademark activity involving the other four senses.

"If a shape, a sound and a fragrance can act as symbols, why, one might ask, can a color not do the same?" the court noted.

In the 5-year-old Qualitex case, the product linked so inextricably with its color was a press pad used in dry cleaning machines. But the decision could also have an impact for more consumer-oriented goods.

"A lot more individuals and companies will begin to look at color now that they are not going to be subjected to the diversity of various circuits and now that there is a unified position of color," said David Gryce, trademark attorney for Dr Pepper/Seven-Up Cos. "We may see more companies willing to take the risk and go forward with color alone."

Mr. Gryce issued a friend-of-the-court brief in Qualitex Co. vs. Jacobson Co. Dr Pepper, known for its maroon-color label, supported Qualitex's trademarking of its green-gold color.

Manufacturers and advertisers have been using color as a marketing tool for more than 50 years. However, the ambiguity and difficulty in securing a trademark for single colors have deterred companies from approaching the U.S. Patent & Trademark Office.

Since 1985, when the courts granted Owens-Corning Fiberglas Corp. the right to trademark the pink hue of its building insulation, only 30 companies have registered colors, said Lynne Beresford, trademark legal administrator of the patent office. By comparison, the patent office receives 135,000 trademark applications annually.

With the Qualitex decision, "We are going to see companies emphasizing color far more than before if they want to take advantage of color as a trademark," Mr. Gryce said. "We are going to see advertising identify the relationship between the color and the product for the consumer."

Still, many experts expressed caution over this new ruling.

"The Supreme Court has now put many responsibilities on the manufacturers' shoulders that are not necessarily freedoms," said Brian Sharoff, president of the Private Label Manufacturers Association. He said the decision helps large manufacturers with deep pockets who can buy an expensive ad campaign that promotes a product's color. He added that these high-profile campaigns may intimidate and even edge out smaller companies.

Companies might avoid legal entanglement by fulfilling two major requirements set by the Supreme Court. The court said a single color can be trademarked only if the hue is non-functional and has achieved a "secondary meaning" or consumer recognition.

To fulfill these requirements, trademark lawyer David Kelly said, companies must fully research the color's history and examine its uses within the industry and by its competitors. The patent office will also scrutinize the application, inspecting not only the company's intent but also its marketing campaign, including advertising.

Although the Supreme Court ruling has opened up new avenues for the manufacturing, advertising and marketing industries to explore, experts say the new patenting freedoms haven't revolutionized the marketplace or the ad industry.

"The issue here is that the marketplace is growing, developing and maturing, and so is the law when it comes to this issue," Mr. Gryce said. "The Supreme Court's decision is really about the growth of modern day marketing and advertising, and the law is doing its best to keep up with it."

Now that single colors can be claimed as a protected right, such modern marketing strategies as smell, ad formats, services, and unusual combinations of color and smell may soon be heading toward the Supreme Court's steps.

"People don't just connect up with words anymore," Mr. Gryce said. "They connect up with colors, sounds, smells and any of the other senses."

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