COLOR IS THE ISSUE IN TRADEMARK TUSSLE

Byline: JOANNA RAMEY

WASHINGTON — Should a company be allowed to trademark a single color to protect a product against knockoffs?
The Supreme Court is weighing the issue this term. Trademark experts say a decision in favor of trademarking a single color probably will not allow cosmetics companies to lay claim to specific product colors, such as blue eyeshadow or red lipstick, but a verdict could affect the use of color in packaging and marketing when defining a corporate image, such as Mary Kay Cosmetics’ creamy pink.
The color at stake in Qualitex v. Jacobson Products Co. is a greenish gold, which Qualitex has used in its Sun Glow brand of commercial dry-cleaning press pads for more than 30 years. The Chicago-based company argues that its trademark protection was violated when Jacobson, a competitor, began marketing a press pad in the same color.
The color, as Qualitex sees it, is synonymous with its press pads and thus is its distinguishing characteristic. The company said this distinction is crucial in an industry where many workers are non-English speakers and product recognition by color is important. According to Qualitex, 39 percent of people surveyed by the company identified Jacobson’s green-gold press pads as being made by Qualitex.
Two lower courts found Los Angeles-based Jacobson to have violated the Lanham Act’s trademark provisions, despite the company’s claims that it distinctly labeled its press pads with its own name.
Jacobson, well known in the dry-cleaning industry for its “Magic Ironing Shoe,” said it chose the green-gold color because it has become accepted as an appropriate color for press pads, in part because it hides burn marks on the pad, giving it longer wear. The company has argued that because color serves a function, it can’t be trademarked.
“Competitors who take sufficient steps to avoid public confusion or false designation of origin should be allowed to compete based on the quality of their merchandise, not based on such artificial factors such as whether the products are made of the same color,” Jacobson stated in Supreme Court documents.
Federal courts have been wrestling with the single-color issue for years. Color has long been allowed protection if it’s included as part of a trademark for a device, design, symbol or logo, such as Giorgio Beverly Hills’ yellow and white striped boxes, McDonald’s golden arches and the Mets’ blue and orange New York skyline logo.
But regarding whether a single color should receive protection, there are differing opinions between the Ninth and Seventh federal circuits.
The Seventh Circuit in 1990 ruled that Nutrasweet could not lay claim to the color blue for its sweetener packets, expressing concern that to do so would be anticompetitive.
But three years earlier, the Ninth Circuit came to a different conclusion in finding that Owens-Corning’s 29-year practice of dying its Fiberglas insulation pink distinguished the product as the company’s own. The ruling implied that consumers of insulation have come to equate pink insulation with Owens-Corning, which means that pink has taken on a secondary meaning, the threshold requirement for securing a trademark.
Because of this strict secondary meaning threshold, trademark experts say consumer products, such as cosmetics, may not qualify for having their colors trademarked, should the court rule in Qualitex’s favor.
Proving that a color has a track record associated with one particular product is difficult, said Christopher Larkin, a member of the International Trademark Association and a partner in the Los Angeles law firm of Graham & James.
“I don’t see people rushing into the Patent and Trademark Office and registering green for perfume or blue for a blouse,” he said.
But proving secondary meaning for a color, particularly with a long-standing product or with packaging that establishes a corporate image, isn’t impossible, said Qualitex’s attorney, Donald G. Mulack of the law firm Keck Mahin & Cate, Chicago.
For example, a case could be made for securing a trademark on the creamy pink color used by Mary Kay on everything from products and packaging to the cars it gives sales staff, he said.
“If the company is able to establish, through long and exclusive use, that Mary Kay is the only one who uses that color and consumers recognize that color and immediately think of Mary Kay,” Mulack noted, “then it would go a long way in establishing secondary meaning.” — Fairchild News Service

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