Tag: color

Posted on

Multi-Color Design Trademarks and Trade Dress

SATA_Italco_PaintSATA GmbH sued Discount Auto Body and Paint Supply LLC for infringing its product design trademarks in the alleged sale of paint spray guns. SATA GmbH & Co. KG v. Discount Auto Body and Paint Supply LLC, No. 2-17-cv-03101 (D.N.V. 2017).

This case demonstrates that it is possible not only to obtain trademark protection in a product design comprising a single color applied to an area of the product, but also on any color applied to an area of a product. In other words, the use of any color on an area of a product can itself act as a trademark, indicating a source of goods and/or services.

One of the trademark SATA asserted was U.S. Trademark Registration No. 2,770,801 for a design mark of “a green band of color extended around the circumference of a paint spray gun air cap ring, the green band being narrower than the air cap ring…The drawing is lined for the color green.” The drawing of the mark is:

US_TM_Reg_2770801

SATA also asserted U.S. Trademark Registration No. 2,793,583 for to a design mark of “a band of [any] color extended around the circumference of a paint spray gun air cap ring, the color band being narrower than the air cap ring and of a color that contrasts with the air cap ring.” The drawing of the mark is:

US_TM_Reg_2793583

Therefore, the first trademark registration is directed to a green ring on a paint spray gun. But the second trademark is directed to a ring of any color, as long as that color contrasts with the air cap ring.

Below is a photo of the green ring deployed on SATA’s actual product.

GreenCapRing

The principle of allowing the registration of multi-color design marks appears to be first addressed in a 1972 case where Data Packaging Corp. applied to register a design applied to a computer tape reels. In re Data Packaging Corp., 453 F.2d 1300, 1302 (CCPA 1972). The claimed design was to “a narrow annular band mounted on the front reel flange, adjacent to and concentric with the hub of the reel, in a color which contrasts with the reel flange.” The USPTO refused registration asserting that the law prohibited the registration of a mark which provided for the use of any color as its distinguishing feature.

The court of appeals rejected that view and reversed the USPTO. The court concluded that “there is no reason why an applicant should not be able to obtain a single registration of a design mark covering all the different colors in which it may appear, that is to say, not limited to a particular color.”

The SATA case is only at the complaint stage so we don’t have any rulings with respect to SATA’s marks. Nevertheless, the plead registrations demonstrate a multi-color design trademark registration.

Posted on

Should I Claim Color In My Trademark Application?

FedExIf your trademark or logo includes color, then you may wonder whether your federal trademark application should include a claim of color. If this is your first trademark application, then likely you should not make a claim for color. When no claim of color is made and the trademark is presented in black and white then the registration is presumed to cover the mark when presented in any color.

However, if color in your mark is very important so that you would want the best chance of stopping others using your color scheme with different words/characters, then you may want to make a claim for color in your trademark. For example, Federal Express has a trademark application and various registrations on the mark FedEx with “Fed” claimed in purple and the “Ex” claimed in orange. Therefore, it might be possible for FedEx to claim that the use of “LadFx” infringes its trademark, if LadFx was presented in the same color scheme where “Lad” was in purple and “Fx” was in orange. This claim is not guaranteed, but FedEx would have a better chance if they have a registration claiming color, than if they did not.

However, these registrations claiming color where not the first trademark registrations that Federal Express filed. Instead, one of Federal Express’ first trademark registration, filed in 1984, did not make any claim for color. This registration from 1984 provides a standard character claim to “FEDEX,” alone without any claims to style or color. Standard character marks cover the words/characters presented in any font stylistic arrangement or color. Therefore standard character marks can be considered broader than special form marks claiming style elements, logos, or color.

If you look at other brands you’ll find the same pattern. When a company files a trademark application claiming color, often this is not their first application. Many times the company first files a trademark application claiming only standard characters or a logo without color and then later they file a subsequent trademark application(s) claiming color:

  1. Startbucks, first standard characters, later a color logo;
  2. Google, first standard characters, later claims of color;
  3. Subway, first standard characters, later claims of color;
  4. Apple logo, first the logo with no claim of color, later claims over apple logo with horizontal color stripes.

MSNBC filed a trademark application claiming standard character mark on the same day that it also filed a separate application claiming color (Why companies have multiple trademark registrations on the same mark?).

According to a search of the USPTO records, other brands have not bothered to claim color in trademark registrations on their names, such as, T-Mobile, IBM, and Harley-Davidson Motorcycles.

Generally the words / standard characters of the mark are more distinctive (if the words / standard characters are not distinctive, consider combining the words with style or logo elements as a special form mark). So the words/characters of the mark tend to be more important than the color elements of the mark. Therefore, for your first federal trademark application you should probably not make a claim for color, unless color is very important. And if color is very important, you may want to consider filing two applications, one as standard character and one claiming color.