Trademarks are a form of intellectual property designed to protect your brand from those who seek to confuse consumers and trade upon your company's goodwill. Many businesses choose to register their name and logo with the U.S. Patent and Trademark Office (PTO) to ensure that they have nationwide federal protection.
Many brands incorporate color as part of their central identity. Consider Tiffany's shade of light blue, or Starbucks' shade of green. These colors or directly associated with the companies by consumers, so much so that they can recognize your storefront or packaging without even reading your name.
If you are preparing to file a federal trademark application with the PTO, you may decide that you want to protect your mark in a particular color. For example, your logo may be burgundy on all of your advertising and marketing, and thus you may want to specifically reserve that color as part of your mark. How do you describe these colors to guarantee adequate protection?
The first question is whether you should claim a color at all. Sometimes, more flexibility is gained by filing the trademark in black and white, which is the default for marks registered with the PTO. If you submit your mark in black and white, you can modify your color scheme later if you wish, and not have to register the newer incarnations of the mark.
However, you will not be protecting the colors in that case, only the underlying words and design. Consider, for example, "Google," which frequently changes the color and format of its logo on its website. If, however, you are absolutely sure that you want to include colors in your application, it might be wise to describe the specific color on your trademark application.
Note that you cannot "own" a color for all purposes. Federal courts ordinarily hold that a brand can trademark a color only for a discrete use. For example, in 2012, the famous shoemaker Christian Louboutin won a lawsuit over competitor Yves Saint Laurent over the use of red soles on women's shoes. Louboutin has long used red-lacquered soles as part of its distinctive appearance, and when Yves Saint Laurent tried to release a shoe with the same type of sole, the U.S. Court of Appeals for the Second Circuit agreed that Louboutin's color trademark was valid.
However, the court was careful to note that the trademark was limited to the use of the color in that specific context. That is, Louboutin does not "own" the shade of red for clothing, packaging, or anything else. What does this mean for you? Your color trademark will apply only to a specific function, whether on a logo or a box or a product, and only within the specific trademark class associated with your product or service.
If you wish to proceed with registration of a trademark that includes colors, the drawing submitted with the trademark application must show the mark in color. In addition, the application must include:
When describing the color, you can use the generic name and if you wish, claim a reference to a commercial color identification system such as Pantone Matching System (PMS). PMS is a color system that organizes different shades of colors by different codes. Of course, the examining attorney has the discretion to require that the applicant indicate shades of a color, if necessary to accurately describe the mark. You can read more about this description in the PTO's Basic Facts About Trademarks.
What about stippling and lining? You may have viewed trademarks in the PTO database in which colors in a trademark application are indicated by special lines or dots referred to a “stippling and lining.” Not to worry about this language. Stippling and lining are not required for trademark applications filed after November 2, 2003, so references to this language are somewhat antiquated, even though you will occasionally see the phrase in PTO literature.
In short, if you are preparing to file a trademark, consider whether color will be central to your mark, or whether you will want the flexibility to alter your shades down the road. If you decide to move ahead with a color application, make sure you are prepared to describe your particular color usage in detail to satisfy the PTO examiners.