CHAPTER 2 - § 2.04

• Jurisdiction: United States

§ 2.04 PRODUCT COLOR

Courts have treated single-color trade dress (e.g., pink for insulation, yellow for sweeteners, green for dry cleaning pads, etc.) much like product configuration trade dress, in that inherent distinctiveness cannot exist and thus secondary meaning must always be proved. Multicolor trade dress, on the other hand, has not been treated uniformly. For example, one court in New York held that John Deere's well-known green and yellow color scheme was not inherently distinctive,⁶² and another held that the color scheme for a relatively obscure pay telephone (which included a purple globe design and a rainbow) was "arbitrary and fanciful"⁶³ and thus inherently distinctive.

The two cases that started the movement to protect color as trade dress are Owens-Corning (i.e., the pink insulation case)⁶⁴ and Qualitex.⁶⁵ In Owens-Corning, the U.S. Patent and Trademark Office initially refused to register the color pink as a trademark for insulation.⁶⁶ The applicant appealed, and the Court of Appeals for the Federal Circuit reversed, thus permitting the registration.⁶⁷ This marked the first time that color had ever been registered at the U.S. Patent and Trademark Office. Despite this holding, some courts continued to take a dim view of product color trade dress.⁶⁸

Then, in 1990 (five years after Owens-Corning), a manufacturer of dry cleaning press pads (Qualitex) brought suit against a competitor for using a "green-gold" color for its pads, a color Qualitex had been using for over forty years.⁶⁹ During the suit, Qualitex registered the green-gold color as trade dress and added a count for infringement to its complaint.⁷⁰ Qualitex won at the district court, but the Ninth Circuit set aside the trademark claim, finding that color alone cannot be registered by the U.S. Patent and Trademark Office.⁷¹ Appeal was taken to the Supreme Court, who reversed, finding that color can be registered if it provides a source-identifying function (i.e., if it has acquired secondary meaning). The Court pointed out that product color can never be inherently distinctive,⁷² and Qualitex is often cited for that very proposition.

Since Qualitex, many companies have registered single and multicolor trade dress with the U.S. Patent and Trademark Office. As examples, Tiffany & Company has registered the color blue (in particular, robin's egg blue) as used on boxes for jewelry and other items,⁷³ United Parcel Service has registered the color chocolate brown (Pantone 462C) as...