Colors, combined with shapes or words or other colors, have long been protectable as trademarks in the U.S. But in March, the Supreme Court held that a "color alone" can act as a protectable trademark (AA, April 10). Back in 1985, Owens-Corning successfully registered the color pink as a trademark for building insulation. But in 1990, NutraSweet met a different fate when a federal court refused to recognize trademark rights in the color blue for its sweetener packets.
Now the law is clear. In Qualitex Co. v. Jacobson Products Co., the Supreme Court held in a unanimous opinion that Qualitex can trademark the green-gold color on its press pad used in dry-cleaning machines. The court decided that color, standing alone, can indeed act as a protectable trademark if two basic conditions are met: First, the color must serve no utilitarian function; and second, the color must have attained what trademark lawyers like to call "secondary meaning" in the minds of consumers.
And that's where the advertising industry comes into play: The task of developing the "secondary meaning" of a color in the minds of consumers will necessarily fall on the ad professional.
Some trademarks need not fret with this requirement, for they are inherently distinctive-so fanciful and unique that they are entitled to immediate trademark protection. The famous Xerox and Apple marks spring to mind. But color is different. Under the Supreme Court's ruling, color must earn its stripes, so to speak. It does so by attaining a second meaning, a "trademark meaning," so that customers associate "pink" insulation with Owens-Corning or "blue" packets with NutraSweet. And how does color pull it off? Through advertising, naturally.
If your company decides to seek trademark protection for a color, you must adhere to a carefully developed plan. The path followed by Owens-Corning maps out a route to success.
1. Select a unique, nonfunctional color: Pink does nothing for house insulation.
2. Use the color on the product packaging: Pink graphics were used on the packages.
3. Advertise the color widely, immediately, and consistently: Owens-Corning spent over $42 million in 10 years.
4. Select a "colorful" character to plug the product: Owens-Corning brilliantly used the Pink Panther.
5. Develop slogans highlighting the color: Recall the memorable "Put your house in the pink."
6. Prominently use the color in point-of-sale advertising materials: Owens-Corning supplied its dealers with pink sales materials.
7. Coordinate the color among all promotional efforts including "giveaway items": Owens-Corning provided pink coffee mugs.
8. Monitor the effectiveness of marketing efforts to determine how much consumers associate the color with the source of the product: An Owens-Corning survey showed that 50% of homeowners answered "Owens-Corning" when asked what manufacturer makes pink insulation.
9. Inform the public on packaging material and on the product itself that the color is a trademark of the company.
In addition to the Owens-Corning formula, companies might want to adopt a work mark incorporating the color to strengthen the identity of the color alone. Owens-Corning could have used a "Pinksulation" trademark.
Following these suggestions can make it much easier for the advertising industry to help clients establish trademark rights in a color. The opportunities for creative campaigns are limitless-blue bananas, anyone?M
Mr. Kelly is a partner in the intellectual property firm of Finnegan, Henderson, Farabow, Garrett & Dunner in Washington, and advises on trademark matters.