Companies often try to use a particular colour or colour combination on their goods or packaging materials to give their products a consistent look and to distinguish their brand from their competitors' product offerings. The use of a certain colour or colour combination can, over time, create an overall distinctive look that is recognizable and identifiable solely with the source of the products, so that a product (or packaging) with a certain colour (or combination of colours) signifies a particular brand in the mind of the consumer.

US trade mark law recognizes the source identifying potential of a particular colour or colour combination and, therefore, has provided companies with the ability to claim exclusive trade mark rights in a specific colour in connection with their products, in particular if that colour acts as a symbol and has attained secondary meaning. US trade mark tribunals have upheld a party's exclusive rights in a colour (or combination of colours) which have attained secondary meaning as a basis to prevent a competitor from using an identical or confusingly similar colour or colour combination in connection with the advertising or sale of their products when such use may be likely to cause confusion as to the source of the products at issue.

However, there may be certain limitations on the ability of a company to sustain exclusive rights in and to a colour. Specifically, exclusivity would be difficult to sustain for a certain colour in the abstract separate and apart from the application of that colour to a specific product, shape, design, configuration or packaging. Similarly, a colour that performs some sort of utilitarian function as applied to a product would be difficult to establish as an exclusive source identifier.

In view of US trade mark laws regarding protection of a certain colour, when a company is seeking to introduce its products into the US marketplace, it should be certain to have US trade mark counsel review not just the name of the product being sold but also the product's appearance and packaging to ensure that the product offering will not infringe the rights of a third party.

Karen Artz Ash and Bret J Danow

Katten Muchin Rosenman LLP
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New York
New York 10022-2585
United States
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karen.ash@kattenlaw.com  
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