Claiming Color as a Feature of a Trademark
If you have a logo that you want trademarked, you will need to decide whether or not to "claim color as a feature" of your trademark. Find out what it means and how do make the right choice!
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NARRATOR: James sells ice cream. He came up with a memorable name and crowdsourced the logo for his business. He absolutely loves how the logo looks, and so do his customers.
NARRATOR: James is a savvy business owner. He knows the value of trademarks. He understands that one day his business will become a franchise. So he wants to trademark the logo. He does have one question though.
TRADEMARK FACTORY: Hello, Trademark Factory here!
JAMES: Did you receive the logo that I emailed you? Can we trademark it?
TRADEMARK FACTORY: Yes, your logo appears to be registrable.
JAMES: I called a few firms before I called you and they kept throwing their legalese at me. Something about color. If Iâ€™m planning to claim it from someone...
TRADEMARK FACTORY: Oh, I guess they asked you if you were planning to claim color as a feature of the trademark?
JAMES: Yeah, thatâ€™s it. I asked to explain it to me in plain English, but all Iâ€™m getting is quotes from some textbooks and court cases. Iâ€™m an ice cream guy, not a lawyer!
TRADEMARK FACTORY: I get it. Let me explain in plain English!
JAMES: Yeah, itâ€™d be nice for a change.
TRADEMARK FACTORY: There are three options here.
JAMES: Three?! I thought that you could either claim it or not claim it? How can there be three?
TRADEMARK FACTORY: Yes. Just bear with me for a moment.
TRADEMARK FACTORY: The first option is when you tell the Trademarks Office that color IS a feature of your trademark, which means that your customers recognize you BECAUSE you use particular colors for your brand.
TRADEMARK FACTORY: In your case, the only part that is really distinctive is the yellow background and the two-color word BERRETTE.
JAMES: How so?
TRADEMARK FACTORY: Well, all strawberries are red. The beret is not of any particularly unusual color. But the yellow background, the red BERR and the black ETTE are memorable.
JAMES: I see. Well I think that our customers surely remember the yellow, especially since Iâ€™m wearing yellow uniform.
TRADEMARK FACTORY: If you claim color as a feature of the trademark, you will be able to stop imitations of your trademark that may have a slightly different design but the same colors. So it can allow you to prevent someone from placing a red circle with a different red-&-black text on a yellow background.
JAMES: But it would not protect me if they use a cherry with a hat but with different colors?
TRADEMARK FACTORY: Thatâ€™s right.
JAMES: But what are the other two options?
TRADEMARK FACTORY: Well, the second option is NOT to claim color as a trademark.
TRADEMARK FACTORY: This way you will be able to protect the actual design of your logo, regardless of the color.
JAMES: But this would not allow me to stop my competitors if they chose to use a cherry instead of a strawberry on the yellow background?
TRADEMARK FACTORY: Letâ€™s just say that it would be a lot more difficult to prove that the two marks are confusing.
JAMES: I see. So how do I protect both the colors and the shape?
TRADEMARK FACTORY: Well, this is the third option. You would need to file two separate trademark applications. You would claim the color as the feature of the first trademark and not claim it as the feature of the second trademark.
TRADEMARK FACTORY: Typically, color trademarks are easier to register, but this may limit the scope of protection of the shape, because your competitors would get away with smaller variations to the shape as long as they use different colors. On the other hand, black-and-white logos provide stronger protection for the shape, but your competitors could get away with an imitation of your brandâ€™s colors if they use a different design.
JAMES: So how do I decide?
TRADEMARK FACTORY: Why donâ€™t you survey your customers and ask them how they tell your ice cream from your competitorsâ€™ ice cream. Give them two options:
1. We know you have a picture of a strawberry wearing a beret;
2. We know you use a picture of a berry on a yellow background;
JAMES: And then what?
TRADEMARK FACTORY: If you see that answer about the a strawberry wearing a beret gets significantly more votes, you should not claim color as a feature of your mark. On the other hand, if the answer about a berry on a yellow background gets significantly more votes, then I would recommend claiming color as a feature.
JAMES: But what if thereâ€™s an equal split?
TRADEMARK FACTORY: Then register both with and without claiming color as a feature.
JAMES: Plain and simple!
Disclaimer: Please note that this cartoon is not and is not intended as legal advice. Your situation may be different from the facts assumed in this cartoon. Your watching this cartoon does not create a lawyer-client relationship between you and Trademark Factory International Inc., and you should not rely on this cartoon as the only source of information to make important decisions about your intellectual property.
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