TRANSCRIPT

Should I Claim Color as a Feature of My Trademark?

If you have a brand that you associate with specific colors—either the brand itself, a background, or the combination of colors, maybe a pattern, something that has to do with colors—the question is always, “Should we file it in color, should we file it in black and white, or maybe both?”

And there are different strategies around this.

In one sense, when you claim color, you limit the scope of protection for what the brand itself is. So for example, if you have a name in a specific font and you say, well we want to make sure it is trademarked in green, because that's how we always use it, then you have less of a protection if someone else uses a similar brand, let's say in purple. And they will always have an argument saying, “Look, we're not using the same brand, and it is a different color. These guys have their brand in green and we are a different brand in purple.”

The Trademarks Office will allow a smaller difference between the two brands to coexist if you claim color.

On the other hand, if green is what the market recognizes you by, then by all means, you need to protect the color itself.

And sometimes, what you end up doing—and I know it's not the perfect solution from the expense perspective, but sometimes it's the best solution from the protection perspective—is when you register the same brand twice. The first time, you file it claiming color and the second time around—you just file two applications right away—without claiming color. This way you get the best of both worlds.

Again, remember, trademarks are not about expenses, trademarks are about protecting your valuable assets. So, don't try to save a few hundred dollars here and there. Try to build an asset that might end up worth millions. Make sure you do the right thing and just look at it from the perspective of, “Is it a valuable asset that I want to protect?”

And if the answer is YES so do whatever it takes to protect it. If the answer is NO, then you don't need a trademark. But the question then is, why you are building this business with this brand if it has no value?